The Patent Office listens to its users

Trade Marks Registry has been talking with users on how the existing trade marks examination process can be improved. The consultation focussed on Section 5 of the Trade Marks Act 1994 which refers to the relative grounds for refusal of a trade mark. Users agreed that the existing examination system was untenable and overwhelming support came for a proposal whereby the official search for conflicting earlier marks will be used solely for information purposes by the applicant of a trade mark and the owners of any earlier conflicting rights. The Patent Office agreed with this approach, having originally recommended a system where only the applicant would be notified. The Minister has also agreed with this in principle.

The changes aim to strike a balance between the interests of applicants for trade marks and earlier rights owners. It will become easier for applicants to register new trade marks and by allowing marks to proceed to publication and also informing the earlier rights holder of a later application rather than blocking it outright, a more realistic market place assessment of the conflicting marks can be made at opposition stage.

The Office is in the process of drafting detailed proposals which will form the basis of further consultation with users. It is anticipated that the changes will be effective from October 2007.

Editor note:

• In February 2006 the United Kingdom (UK) Trade Marks Registry, published a consultation paper on how we should deal with the relative grounds for refusal contained in Section 5 of the Trade Marks Act 1994 ("the Act"). The consultation period ended on 17 May 2006. A copy of the Consultation response document (54Kb) is available on this website.

Date of release: 15 September 2006