7 December 2011

The UK's on the Right Start

The UK is far from perfect. But one thing we do have is an excellent IPO. Following on from my previous blogs on searching, they have an efficient search facility in place.

Request a search from them and if you are happy with the results you can file an application for half price. This is not what happens in practice, but this is effectively what you can do.

The IPO operates a "Right Start" filing option where you file a trade mark application and pay half the regular filing fees. They examine it and notify you of any marks they consider similar - or in other words they inform you of marks that could have been cited in a search. The search covers UK and Community Trade Marks, including appropriate International Registrations. It is no longer in their power to refuse an application on prior rights and the applicant can decide if it wants to pay the balance of the filing fee and the application then proceeds to advertisement (this assumes there were no other objections or they could be resolved).

Official fees for a Right Start application start at £100 for one class. This is in the same ballpark as a UK Register search conducted through a specialist search firm. You then pay £100 again (one class) following examination, presuming you wish your application to proceed. You do lose out on the £30 discount provided for regular e-filings by taking the Right Start route but it is still representing good value.

I believe Right Start was designed for small UK applicants, particularly those that file directly at the IPO without being represented, but there is no reason why the service cannot be taken advantage of by larger trade mark owners including those from abroad. A clear advantage is getting a filing date whilst "searches" are being undertaken, although applications enter the public domain and it might allow competitors to scrutinise your branding strategies. You are also reliant on the Examiner as marks he or she considers dissimilar will not be listed in their examination report but could still form the basis of oppositions.

This does not supersede any (free) identical or near identical searches that can be made prior to filing.

Foreign trade mark owners file less and less in the United Kingdom as the Community Trade Mark route is usually preferred. However, many British people do not regard themselves as European (much to this Europhile's chagrin!) and some businesses from certain industries - most infamously food - may treat the UK as a distinct, important market. They may find particular value in exploring this workaround with respect to searching and filing.