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NEW UK OPPOSITION FAST TRACK PROCEDURE

2013-08-26

INTRODUCTIONThere have long been criticisms about the opposition procedure in the UK. One of the main complaints (albeit not unique to the UK) is that it takes too long for decisions to issue and the proceedings can become costly, especially for individuals or small businesses. A number of measures to address this were brought in by the UKIPO, including a longer cooling-off period to try to get parties to settle without the need to file evidence as well as the UKIPO issuing Preliminary Indications.However, most of these changes have been ineffective and so the UKIPO is planning to introduce a new fast track opposition procedure in addition to the conventional opposition procedure.

SO WHAT ARE THE DIFFERENT OPPOSITION PROCEDURES?

The main differences between the fast track and conventional opposition are as follows:-

•       The official fees to file a fast track opposition will be reduced from £200 to £100. However, the official fee for conventional oppositions will also be reduced to £100, provided it is only based on Article 5 (1) and (2) grounds, i.e. identical marks covering identical goods/services or identical or similar marks covering similar goods/services respectively;

•       The Opponent will only be able to bring a fast track opposition based on Article 5 (1) and (2) grounds. You will not be able to rely on reputation (Section 5(3)) or common law use rights (Section 5(4));

•       It will also only be possible to file a fast track opposition if you are relying on registered marks, and you can rely on no more than three such marks;

•       If the Opponent relies upon registered marks that are over 5 years old, it is necessary to file evidence of use at the time of filing the opposition (as opposed to during the evidential rounds in a conventional opposition).  If the proof of use is considered insufficient, the UKIPO will have discretion to allow the Opponent to file further evidence or they may ask that the opposition transfer to a conventional opposition track; and

•       Under the proposed fast track system, the Registry will aim to issue a decision within three to four months (it currently takes around two to three years for a conventional opposition to reach its conclusion).

WHAT ARE THE PRACTICALITIES?

We believe the introduction of a fast track system is a positive step.

One of the important ramifications is that, if you wish to rely on the fast track procedure, or if you wish to file a conventional opposition for a reduced opposition fee, your opposition grounds will have to be limited to just Section 5(1) and (2) claims. At present, too often Opponents will include additional grounds such as  reputation and common law rights even when they do not have the requisite levels of use in the UK to rely on these grounds. This “kitchen-sink” approach can lead to an over-complication of the opposition proceedings and increases the costs. Our hope is that the new provisions will reduce such practices.

It will therefore be important to consider your grounds of opposition at an early stage and to make sure you are relying on your strongest marks, as opposed to simply including all of your marks which may preclude the fast track approach.

You may also be aware that the opposition deadline in the UK is 2 months from the date of publication, but this can be extended by 1 month. We therefore recommend taking advantage of this 1 month extension period not only to allow more time to settle with the other party, but to also ensure your evidence of use is gathered at an early stage in case you decide to proceed with the fast track option.

The intended launch date for the fast track opposition is October 2013 but we will keep you updated on any developments.

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