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UK Fast Track Opposition




by:
Claire Lehr
John Olsen
Edwards Wildman Palmer LLP - London Office

 
October 3, 2013

Previously published on October 2, 2013

In an effort to combat criticism of the UK-IPO trade mark opposition procedure, which can be lengthy and costly and therefore off-putting for smaller enterprises / individuals seeking to protect their rights, the UK-IPO has announced its intention to implement a new, fast track opposition. The announcement comes after in-depth consultation with trade mark professionals, professional bodies and small and medium enterprises (“SMEs”).

The expedited procedure is set to be more cost effective, with the opposition fee reduced from £200 to £100. It will all be more streamlined, but to achieve this there will be restrictions. We look at these in the question and answer section below.

Who can file an expedited opposition at the UK-IPO?
The fast track option is only available to holders of earlier protected rights, which do not include those who hold unregistered rights. Opponents who wish to base an opposition on their unregistered rights will continue to use the existing opposition procedure.

Why are holders of unregistered rights excluded from a fast track opposition?
Fast track oppositions will be limited in grounds to S5(1) and S5(2) of the Trade Marks Act 1994. Oppositions based on these grounds are for earlier identical mark protecting identical goods and / or services or earlier identical or similar mark protecting similar goods and / or services.

Is there a limit to the number of marks on which the opposition can be based?
Yes, the UK-IPO has determined oppositions using the fast track procedure may be based on a maximum of 3 earlier protected rights.

What if my earlier rights are more than five years old?
Unlike with the existing opposition procedure, proof of use of an opposition mark must be filed at the same time the opposition is filed AND there will be a limit on the volume of evidence that may be filed.

Can further evidence be filed?
Yes, but you must obtain leave to file further evidence if you intend to file any evidence other than proof of use of your mark(s).

Can I switch to a conventional opposition from a fast track and will I have to pay more?
The Registrar will have a discretion to treat a fast track opposition as a conventional opposition in circumstances where the requirements of a fast track opposition are not met. Such circumstance will include filing of evidence over the set volume. If your opposition is treated as a conventional opposition, you will have to pay the additional fee of £100, which brings the total UK-IPO fee to £200, the current fee of a conventional opposition.

What about hearings?
In line with the intention to keep the costs down, hearings are likely to be telephone hearings rather than in person.

Can the decision in a fast track opposition be appealed?
Yes, for a fee of £250. The winning party will be able to recover this fee. There is, however, no intention to introduce a fast track appeal procedure at present.

When can I file a fast track opposition?
The UK-IPO is accepting fast track oppositions with effect from 1 October



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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