intellectual property news - trade mark watching

On 1 October 2008 the Trade Mark Rules 2008 came into effect. These rules have streamlined the trade mark application process and the time between filing an application to registration for unopposed trade mark applications is shorter.  This means that many publishers who file trade marks will find they get their marks registered more quickly.  But publishers who are trade mark owners will also need to take greater care to monitor for later trade marks which conflict with theirs (trade mark watching). 

The background is that the opposition period following publication of a trade mark application has now been reduced from three months to two months, though this period can be extended to three months by request to the UK IPO.   If your trade mark application is opposed, the period in which you can file a defence or a counter-statement has also been reduced from three months to two months.

The rules also allow the UK IPO to be more flexible in relation to missed deadlines.  Previously if an applicant failed to file a counter-statement in the period allowed their application was automatically refused.  The new rules give the UK IPO discretion to consider a late defence.

The rule changes mean that publishers who are trade mark owners need to be more vigilant about monitoring their trade marks otherwise they risk losing the chance to object to conflicting trade marks.  Our trade mark team can provide further advice on how this can best be done and also on the best ways to secure trade mark protection for publishing brands and titles. 

The Company Names Tribunal – preventing others using your company name

Regardless of trade mark law, when companies are registered at Companies House there are procedures in place to avoid the registration of new company names which conflict with existing company names.  Publishers should be aware of the expanded rights they may have if a publishing company is set up with a name which conflicts with their name.  This is because the company names adjudicator system has been updated, which expands the way in which objections can be made against company names which conflict with other company names.  Previously, objections to other company names could be made only by persons with the same or similar company names.  The new objection procedure is only to be used in relation to 'opportunistic' registrations but means, in the right circumstances, anyone with goodwill in a trading name can object to a new company name registration which is misleading.   It costs £400 to apply to the Tribunal.

The UK IPO website has more information on all the Trade Mark Rules 2008 and the Company Names Tribunal (http://www.ipo.gov.uk/home.htm).

For more information, contact Kate Briggs T: 023 8085 7067; E: kate.briggs@bllaw.co.uk.