Fast Track Oppositions

It has been an awfully long time since I posted on here, too long in anybody’s book (or Kindle). Luckily I had the foresight to prepare a list of reasons (excuses):

  1. My dog ate my laptop.
  2. My cat ate my laptop.
  3. My dog/cat ate every other electronic device I own/use which has internet functionality.

I’m sure you’ll empathise with what has been a difficult time for me.

Now, back to the subject of this post, the very welcome Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 which came into force on 01 October 2013. This brings into play the new Fast Track opposition procedure the aim of which is to streamline opposition proceedings and in doing so keep costs down. The benchmark that the IPO are looking for is for proceedings to be resolved within 6 months which is considerably less than the 12-18 months that has become the norm under the standard procedures.

One common misunderstanding of the Fast Track is that it replaces the existing procedures. This is wrong. It simply offers an alternative route where the basis of the opposition is that an application has been filed which is similar or identical to an earlier mark and where the goods/services are also similar or identical. The stripped down procedure removes the evidential rounds (albeit cases can be transferred to/from the Fast Track to the usual procedure if evidence is required)  and also requires proprietors relying on an earlier right to provide evidence of use of that mark up front if the mark is over 5 years old.

Official fees for Fast Track oppositions are also lower than the standard procedure, £100 instead of £200.

In summary:

  • Official fee only £100
  • Available only for 5(1) or 5(2) oppositions.
  • If mark was registered 5 or more years prior to date of publication of opposed mark then proof of use must be submitted at the time of filing the opposition.
  • The IPO does not expect any further evidence to be filed by either party (albeit if a party feels it is necessary then they can apply to the IPO for leave to file such evidence), instead upon the Applicant filing its TM8 the parties will simply be given 1 month to put together their submissions.
  • Upon receipt of the submissions the IPO will usually then simply proceed to a decision based on the papers (although the IPO can decide that there should be a hearing, either on its own volition or after representations by either or both parties that there should be one).
It’s rare that I get excited about Tribunal Practice Notices but this one is truly welcome. I don’t have any figures (nor am I inclined to spend the time digging them out) but the vast majority of oppositions that I see are either under 5(1)/5(2) only or have 5(1)/5(2) as their strongest ground and then simply chuck in a couple of other grounds to bulk up the opposition. It strikes me that all parties would therefore be better satisfied if the oppositions were run under their strongest grounds with a decision being released ASAP.

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