The UKIPO is bringing in a new fast-track opposition procedure on 1 October 2013. You will be able to use this procedure if you are opposing an application purely on the basis of identical or similar marks registered for the same or similar goods or services. You will be limited to a maximum of three earlier marks and these must be registered as UK or Community trades or be protected in the UK or EU as International registrations. The fast-track procedure will have a lower official fee than the standard opposition procedure.

A fast-track opposition will be an attractive option when you are going to rely on an identical or similar mark which you have registered within the last five years. There is no need to file evidence in such a case and you should know the outcome fairly quickly: within about 6 months.

If you are intending to file a fast-track opposition on the basis of a trade mark which you registered more than five years ago, you will have to file proof of use at the time of filing the opposition. This may make the fast-track procedure a less attractive option unless you have already prepared your proof of use. In such a case, the standard opposition procedure may be a better option because you would then only need to file proof of use if the applicant for the mark which you are opposing asked for it.

If you want to base the opposition on registered marks with a reputation or unregistered trade marks, where it will be necessary to file supporting evidence, you will have to use the standard opposition procedure instead. You will not be allowed to file fast-track and standard oppositions against the same application: it has to be one or the other.

 

Palmer Biggs IP Solicitors believes in personal service, offering leading expert advice, with an emphasis on commercial pragmatism and innovative working practices, contact us now.

 

 

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