In February 2006, the UK Trade Marks Registry, published a consultation paper on how to 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 and the Registry announced on August 2, 2006 that
The next steps will to be to flesh out Option 5 in more detail and to introducethe legislative and administrative changes to bring it to fruition. This willinvolve further consultation with our users on the procedural rules we intend tointroduce, which will cover the procedures for notifying the applicant of anyrelevant marks identified in the official search, how long the applicant willhave to withdraw or restrict his application before it is published, and thecircumstances in which owners of earlier trade marks will be notified of laterconflicting marks. We anticipate that this process and the necessary changes tothe internal systems of the Trade Mark Registry of the Patent Office will takesome time to complete and, therefore, we expect the new regime to come intoforce in October 2007.
Under the current U.K trademark regime, if the Registry finds an earlier mark that it considers likely to be confused with the new trade mark, it will "cite" the earlier mark as a reason to refuse registration of the later trade mark. Unless the applicant can persuade the Registry that they have misjudged the likelihood of confusion or can otherwise overcome our objection (for example, by gaining the consent of the owner of the earlier mark), registration is refused on what are known as 'relative grounds'. The owner of the earlier mark does not have to ask to do this, it is done automatically, whether or not the owner of the earlier mark is concerned about the later trade mark.
The proposed Option 5, (Search and notify applicant and earlier mark's owner) places the onus on the applicant to make an informed decision on whether the application should proceed. The registrar would not raise any objection based on the existence of earlier marks. However, in this option the Registry would also notify the owners of any earlier marks that they have advised the applicant that may be in conflict. This will alert the owners of these marks to the prospective registration of the application and thus allow them to lodge an opposition. Receiving such notifications could be made optional.
"Relative rights are pretty much going to be a thing of the past, except in certain countries like the U.S.," John Olsen, a partner of Field Fisher Waterhouse in London, reportedly told Managing IP on August 7, 2006.
For more information on this topic, please contact William F. Heinze (firstname.lastname@example.org) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.
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