Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk UK EXAMINATION SYSTEM: RELATIVE GROUNDS EXAMINATION Mark Jefferiss Intellectual Property Office April 2009

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The practice pre 2007 Reasons for the change Managing the change The practice post 2007 The opposition procedure Future developments to the system

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The practice pre 2007 Full examination process Earlier trade marks - bar to registration Around 30% of applications filed had an earlier trade mark raised against it

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Reasons for change Width of claims Increasing volumes Commercial relevance The impact of OHIM Anomaly between the UK and OHIM systems Anomaly within the UK system – - Use requirement for oppositions

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Reasons for change Live marks on UK system UK marks - 529,349 Madrid UK marks - 84,080 OHIM marks - 576,442 Madrid EU marks - 45,361 Total - 1,235,232

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Example of wide specification claims Application : Butterfly Computer software in Class 9 Earlier trade mark : Betterfli Computer software in Class 9

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Managing the change 2001 first consultation no support for change 2005 pre consultation gathering information 2005 consultation Proposed options 2006 consultation Covering the mechanics of the system

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The options 1 – Retain the existing system Full examination Raise earlier trade marks Bar to registration

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The options 2 – Search and raise with notice Conduct a complete search Raise earlier trade marks Applicant to notify earlier trade mark holder Copy letter to IPO

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The options 3 – Search and raise with notice coupled with a proof of use Conduct a complete search Raise earlier trade marks Applicant to notify earlier trade mark holder Copy letter to IPO Earlier trade mark holder to show use of the trade mark

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The options 4 – Search and notify (the applicant only) Conduct a complete search Raise earlier trade marks Do not notify earlier trade mark holder

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The options 5 – Search and notify (the applicant and the earlier mark owner) Conduct a complete search Raise earlier trade marks Notify earlier trade mark owner on advertisement of later filed mark

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Consultation Lessons learnt from 2001 consultation Involving the users in the decision making process Went from existing system to almost universal acceptance of the new system

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The practice post 2007 Retain a full search as part of examination process Notification to earlier right holders opt-in / opt-out system

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Level of oppositions 3% oppositions received prior to % oppositions received post 2007

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Decision making process Mark is advertised in the trade mark journal Open to opposition for 2 months Period can be extended by 1 month (TM7A) Opposition must be filed on official form (TM7) together with the fee

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Decision making process Defence Cooling off period Periods for filing evidence and written arguments Possibility of oral hearing Decision

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Decision making process Hearing –Oral hearing –From the papers Decision Costs

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk The Change to an Opposition System Oppositions increase from 1036 in 2007 to 3012 in defences filed in 2008 (610 in 2007) 895 enter cooling off period (216) 163 Revocation applications (non-use) (243) 86 invalidation applications in 2008 (78, 2007)

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk 2008 Rule Changes Shorter 2 months opposition period Extended to 3 months in 7% of cases Timetables set for the filing of evidence/submissions Speeding up procedural decisions – telephone hearings

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Application Rate 2007/ ( Madrid designations) 2008/ ( Madrid designations) Total UK filings reduce by approx 12% – from to (projected)

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Application Success Rate 88% of national applications are now accepted and published 31k trade marks published in 2008 (+ 7.3k Madrid Designations) 38.5% of UK applications/designations are the subject of notifications to owners of earlier marks Current opposition rate = 5% Another 1% withdrawn in opposition period

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Future developments to the system Changes to the cooling off periods (9 months plus 9) Reduction in opposition fee New £100 fee for requests to stay proceedings Increase fee (£100) for an extension of time or an extension of the cooling off period

Intellectual Property Office is an operating name of the Patent Officewww.ipo.gov.uk Any questions ?