What Is The UK Fast Track Opposition Procedure?
The UK Intellectual Property Office (UK IPO) first introduced the UK Fast Track Opposition Procedure in 2013.
Its inception was as direct result of the concerns that the cost and administrative burden of submitting an opposition to trade mark registration was leaving many SMEs open to brand dilution.
This new “fast track” procedure is designed to help businesses, and specifically SMEs, to defend their trade marks if they believe they have legal grounds to do so.
It achieves this by lowering the cost, complexity, and duration of opposition proceedings, making them more accessible and cost-effective.
How is it different from the standard opposition procedure?
The obvious benefit of the UK Fast Track Opposition Procedure is the cost. The standard procedure comes in at £200 per opposition, whereas the fast-track system stands at a more attractive opposition-filing fee of £100.
In addition to the reduced cost, it is also a much quicker process. Under the fast-track system cases are resolved within six months rather than the standard 12 to 18 month period.
Of course, where there are benefits, there’s usually a catch, and this is no exception. This faster system can be only used in certain situations.
The fast-track procedure can only be used for oppositions based on the identity or confusing similarity of the offending trade mark (oppositions can’t be based on pending
Also, oppositions must be limited to a maximum of three earlier marks.
This is therefore significantly narrower than the multiple grounds available under the standard system.
The fast-track system is designed to be evidence-free, although it is possible for parties to ask permission to file it. However, this is limited to matters such as evidence about the co-existence of trade marks or information relating to specialist products and markets.
Marks over five years old
Under the fast track procedure, if the opposition is based on marks over five years old, evidence that they’ve been used on the relevant goods or services within the past five years must be filed with the notice of opposition.
It’s also worth noting that the Hearing Officer can convert the opposition into a standard procedure if it’s considered inappropriate for the fast-track system.
Do you need a trade mark attorney for this simplified process?
The fast-track system is more straightforward than the standard method. Therefore, in theory, it allows parties to represent their own cases.
However, it’s worth remembering what’s at stake. Your brand is your most valuable asset. An attorney will not only help you file your application correctly, but they will also advise you on the best course of action to take. As a result, they could potentially save you a lot of time and money.
The Fast Track Opposition Procedure provides a simpler, cheaper, and more accessible solution for small companies.
Of course, it’s limitations means that only straightforward cases can be dealt with under this streamlined system. Anything more complicated and companies are forced to use the other standard procedure.
The reduced fee may not tempt everyone, but it does bring trade mark oppositions are within reach of many smaller businesses who would have previously been unable to protect their brand.
If you think you have a case for a trade mark opposition, before you do anything else contact Rachael Ward at Ward Trade Marks on +44(0) 1284 774841.
Ward Trade Marks Limited is a Bury St Edmunds-based specialist trade mark attorney firm.BACK TO BLOG