On October 1, 2007, the United Kingdom will reform its practices in the area of relative examination so that they are more closely aligned with the Community Trademark examination procedure. In particular, while Examiners will continue to cross-search new applications against earlier United Kingdom and Community trademarks, the results will be provided to the applicant on an informational basis and will not of themselves be a basis for refusing registration. It will fall to the owner of a prior right to lodge an Opposition if it wishes to block a later mark.
The change is being made in large part because it was considered unduly burdensome on applicants for United Kingdom marks to have their marks refused on the basis of earlier national and Community rights which themselves often overlapped due to the absence of relative examination at the Community level. This resulted in applicants for United Kingdom rights being at a substantially higher risk of encountering an objection than an applicant for a broader Community right.
Whether this change will devalue the perceived value of a United Kingdom national registration remains to be seen. Under the new practice, the owners of prior United Kingdom national rights will be notified of later-filed applications that may conflict with those rights while owners of Community and International rights extended to the United Kingdom can also opt-in for a fee so that they are notified of possibly conflicting United Kingdom national applications.
The change will mean that there will be a greater burden on the owners of United Kingdom national rights to police their marks and affirmatively assert these rights against later applicants by means of Oppositions and other enforcement measures.
Vol. 53, June 2010