Changes in UK Trade Mark Practice
July 16, 2012
A number of changes in the UK trade mark procedure are due to take place on 1st October 2012. These changes mean that now more than ever is a good time to consider trade mark portfolios. Furthermore, if you do not already have a trade mark watch in place, it is now even more important to consider putting this in place.
Restrictions on Merging Trade Marks Registrations
As of 1st October 2012, it will no longer be possible to merge a number of trade mark registrations into a single registration if they each have different filing dates. It is currently possible to merge a number of trade mark registrations, provided they relate to the identical mark and are all owned by the same party. This is useful, as such action can reduce renewal fees. It is therefore important to review your trade mark registrations to ascertain whether you wish to apply to merge a number of registrations prior to 1st October 2012.
Please contact your usual contact at Swindell & Pearson or Katy Fuggle [email protected] should you wish us to review your trade mark portfolio.
Change of Practice Regarding Optional Trade Mark Notification Service from the UK Intellectual Property Office for Owners of Community Trade Mark Registrations
As of 1st October 2012, it will no longer be possible for owners of Community trade marks or International trade mark registrations designating the EU to opt-in to receive notification from the UK Intellectual Property Office of relevant later filed trade marks. This change of practice means that it is more important for Community trade mark owners to consider setting up trade mark watches, in order to receive notification of relevant trade marks. Early notification of relevant trade mark applications can be useful, as we are often able to contact a third party and settle the issue without having to formally oppose the application. The UK Intellectual Property Office’s practice of automatically notifying owners of UK trade mark applications and registrations and International trade mark registrations designating the UK of relevant later filed UK trade mark applications will continue. Our advice is that all trade mark owners should if not already in place, seriously consider setting up a trade mark watch to monitor the third parties applying to register marks which conflict with their trade mark rights. Without a watch, third parties may well be building up rights unknown to you, in connection with marks which conflict with your trade marks. If you wish more details of our Trade Mark Watching Service please contact your usual contact at Swindell & Pearson or Katy Fuggle [email protected]
Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.