Thursday, September 13, 2007

Important Changes to UK Trademark Procedures

From 1st October the UKIPO will not be rejecting trade marks if there is already a potentially-conflicting mark on the register ("relative grounds"). They will still reject inherently unacceptable marks ("absolute grounds") – ie not distinctive, descriptive of goods or service, offensive and so on. Instead they will tell the applicant and the holders of the previous mark(s) about any potential conflicts and leave it to them to negotiate a solution or fight out an opposition action. This is because the EC Community Trade Marks are not examined for conflict at all and applicants were unhappy about having their British trade marks rejected over EC marks which did not have to face that hurdle.
They will inform the holders of potentially-conflicting earlier British marks and Madrid marks with Britain as designated state automatically. However, holders of EC marks and Madrid marks designating the international EC scheme will only be notified if the holder has informed the UKIPO that they wish to be notified. This is a charged service and they have to register using a web form that will be put onto the UKIPO web site on 1st October. So that the site doesn't collapse under a rush, holders of EC or Madrid (EC) marks have until 20th October to register before the first batch of notifications go out. The potentially-conflicting earlier marks will be visible in the entry for the new application on the free UKIPO trade mark status database, but there will not initially be any reference to the conflict on the status page for the earlier mark (apparently there has been some demand for this in the meetings and it may be introduced later).
Under the new rules nobody will be able to bring an opposition action (a legal action to oppose the grant of a trade mark on the grounds of a conflicting prior mark) except the proprietor of the prior mark. For oppositions based on existing unregistered marks, anybody who would have the right to bring an action for common law passing off to defend the mark will also have the right to bring an opposition. Licensees of the earlier mark will only be able to oppose by bringing the action in the name of the proprietor with their permission ("intervention") but they will be able to bring an invalidation action after the mark is granted without this being necessary.
Current legal opinion is that any proprietor of an older mark who does not immediately oppose the grant of a conflicting application will not be prevented from bringing an action later by either the laches or acquiescence rules (whatever they are).
Philip Eagle
British Library

Wednesday, September 5, 2007

Patlib Conference Warsaw 2008

Planning is already underway for next years PATLIB conference and Sue Ashpitel (BL) is the UK representative on the committee.

The EPO is inviting suggestions from PATLIB UK members for a theme and a slogan for the conference - the EPO have provided some examples of the type of theme /slogan they are looking for;

1. Making PATLIBs fit for the future
2. The European Patent network
3. The role of PATLIBS in raising the quality of patent applications
4. PATLIBs - improving patentability
5. Strategic allocation within EPN of target audiences (ie industry, SME's lone inventors , legal profession)

Your suggestions would be most welcome - please send them to Sue Ashpitel
not later than 13th September

Business Advice Open Days

The UK-IPO are visiting various parts of the UK - are they coming to a location near you?

Staff Changes


Muriel Dickson and Joy Grimmond are the new contacts for Aberdeen


John McGuire will be leaving Glasgow libraries on 19th October


Lynne Hinchliff is the new contact for Sheffield PATLIB