Date: 1 October 2010
On 1 October 2007, the UK-IPO ceased objecting to trademark applications based on prior rights.
The move ends the IPO's role as active defender of existing marks. Although U.K. applications may still fail due to conflict with prior registrations or applications, refusals will only follow where owners successfully oppose. The change brings the IPO into line with OHIM and other E.U. national registries, and shifts the burden onto brand owners to defend their rights from third-party encroachment in the U.K.
For brand owners, this recent change matters. A conflicting mark can signal competitor activity that may mislead customers and threaten a brand owner's market share. Once a conflicting mark is registered, its owner enjoys a statutory defence that can slow down and increase the cost of legal action to stop infringement. Conflicting marks on the register may also encourage other competitors to inch closer to a successful brand or its get-up, undermining its strength and ultimately increasing enforcement costs across the board.
To combat these risks, brand owners with rights or interests in the U.K. should consider subscribing to a watching service for their core brands, to alert them to the publication of conflicting marks while there is still time to oppose them. We can work with you to devise the most effective watching strategy, and to identify cases where it makes sense to take action or seek a commercial solution.
We would be happy to advise in more detail on watching services and how they can best serve your business and brands. Please contact the Trademarks Group at Jenkins.
Monday, October 1, 2007