Fast track examination of trade marks - UK

The UK Intellectual Property Office is seeking views on whether there is a need to reintroduce the fast track examination procedure (perhaps - or perhaps not - inspired by the bobsleigh, luge and skeleton in Sochi).

With examination of UK trade mark applications usually taking less than a month, many will ask, "What would be the point?". I feel they would be justified in making such comments.

I can think of a number of things the IPO could improve on (better electronic communications, on-line applications for International applications, etc.) that I feel should be greater priority. Needless to say, these are personal thoughts and may not be shared among other users of the IPO.

I have nonetheless filed submissions to the consultation. If you would also like to respond then you have until 15 April 2014 and make sure it's by 11.45pm (British time).

My response is self-explanatory and repeated below:

I am responding to your consultation regarding the 'Fast Track Examination of Trade Marks'.

It is appreciated that there are circumstances when more speedy (than 'standard') registration is preferable, for example, businesses needing shorter timescales for product launch, legal proceedings, etc.

I believe applicants would be prepared to pay a premium to obtain quicker registration times. The amount proposed is not much in the scale of things if an applicant finds themselves in a scenario where speedier registration is required.

However, Fast Track examination is not cutting significant time from the time from filing to registration because of, notably, the two-month opposition period. Obviously, this is not a period of time that can be moved (without a notable legislative change).

Clearly, Fast Track examination does not guarantee acceptance and does not ensure oppositions will not be filed. In the event of objections or oppositions, these would likely mean a Fast Track application would take longer than a smooth standard application.

With examination periods for standard applications (and also 'Right Start' applications, it can be added) of 20 days or less, how much time would a Fast Track application shave off the whole process?

I would not envisage an uptake of a new Fast Track examination procedure in any greater numbers than from when the scheme ran between 2008-2009.

I make some suggestions to your proposals that may see a greater uptake of Fast Track applications and ensure it provides greater value for money:

1. Applications must be made on-line.

2. Examination by the end of the next working day

This would really put the "Fast" into Fast Track. If necessary, take Examiners from standard applications to fulfil significant demand for Fast Track on a given day.

A "Money Back Guarantee" or compensation scheme should be available when this is not fulfilled.

2. Mandate the use of accepted TMclass terms

This will help enable examination to be completed within the timescale above.

3. Auto-notification of prior rights

Searches can still be performed but, where no other issues have arisen and the application is otherwise accepted, the application should proceed proactively to advertisement. Owners of prior rights, as applicable (e.g. owners of UK marks but not Community Trade Marks), can be notified automatically.

If necessary, put in place a 'Warning Box' to applicants advising them of this if they choose the Fast Track option.

4. Daily publication of the Trade Marks Journal

Under the current suggestion, an application could be made on a Friday, examined and accepted by the following Friday and then still take another week until advertisement in the Trade Marks Journal. That is not fast tracking, in my view.

A daily publication would help ensure a process is truly Fast Track. If necessary, Monday-Thursday Trade Marks Journals only need contain Fast Track applications and the regular Trade Marks Journal can be continued on Fridays only.

5. Registration issued quickly - online notification

The period from the end of an opposition period to actual registration should be improved under Fast Track.

Currently, an application published on 6 December 2013 - therefore with an opposition period running until 6 February 2014 - is scheduled for registration on 21 February 2014. This is over two weeks following the expiration of the opposition period.

For Fast Track applications at least, registration should be completed within, say, two days of the expiration of the opposition period (or other reasonable time required for the Office to process oppositions). Fast Track applicants could also be sent online notification of registration pending receipt of the physical Certificate of Registration. You could also consider sending Fast Track applicants their Certificates of Registration by guaranteed next day post (UK applicants/representatives only).

In conclusion of the above, I think it is misguided to only look at the examination aspect of a Fast Track process. Fast Track publication and Fast Track notification of registration need to be put in place too. The current resources and operations of the Intellectual Property Office may not be geared up to manage this, and making changes to accommodate Fast Track may only be justified if there is significant take-up of Fast Track examinations. Amendments to the Trade Mark Rules may also need to be made which is an added burden.

I would stress that even with the adoption of the above suggestions that, due to the opposition period and the current examination period for standard applications, that the time shaved off in a Fast Track application is still going to be fairly negligible overall, perhaps at best one month. I could anticipate that the uptake of the Fast Track process will not be significant. However, it is appreciated that the Intellectual Property Office are committed to providing a high quality service and its introduction could be useful to applicants that find themselves needing registration more quickly.

It is felt that a standard examination period of under one month is perfectly acceptable in standard cases and matches or beats the performance of most of your counterparts in Europe and the Rest of the World.

Comparing to some other countries with expedited/accelerated examination, Australia does not make additional charges for expedited examination. However, applicants must submit a witnessed declaration detailing the reasons for the request. I feel, if there is going to be a Fast Track option available, that a fee-paying Fast Track approach is better, one where the applicant justifies use of this route and not an Intellectual Property Office.

Switzerland charges 400 CHF extra for expedited examination, cheaper than the 550 CHF basic fee. The Benelux charges €193 extra for fast registration (for 1-3 three classes), again cheaper than the €240 basic fee. Although I feel the £300 proposed additional fee for Fast Track is fare, you may find it useful to benchmark with fellow Intellectual Property Offices, particularly in Europe, also to get a wider picture of uptake and perceived value, as it may paint a similar picture to what could happen for the UK.

I hope these comments are useful.

'Fast track' opposition procedure

The UK is planning on introducing a 'fast track' opposition procedure for trade marks.

It is designed specifically with SMEs in mind and is evidence of the UK IPO's proactive efforts to help these businesses. Their outreach programme sees them regularly at business conferences and seminars as speakers and/or exhibitors. They are also approachable (with restrictions on the advice they can give) when it comes to "DIY" applicants and a large number of UK trade mark applications are self-filed.

SMEs tend to like (in all areas of their business) - and I speak from my own experiences as a business owner here - fixed indications of costs as much as possible. I believe most can handle a scale, e.g. from £x to £y. Transparency of costs is important to them. The IPO identified that the current opposition process can be unwieldy with uncertain cost outcomes and less than predictable timelines. The 'fast track' procedure will be designed to bring more certainty to the table.

OHIM (and WIPO) also have sections for SME's (here and here), but perhaps a more extensive role in engaging with SMEs will/should/must fall more within the duties of national IPOs. It is possible to envisage a future where national applications are predominantly filed by local SMEs/start-ups with the Community Trade Mark being the preferred vehicle for larger businesses; the ONEL case may also have a bearing on this. Of course, trade mark needs are determined by the nature of the products, services and markets so this is a bit of a simplistic view meant as food for thought. Larger companies will continue to use national routes when there is a purely local trade mark need or to form a less risky basis to a Madrid application, as examples, and SMEs will have reasons for filing Community Trade Marks as they do for filing in other foreign jurisdictions.

Trade Mark Watching

A challenge faced by some SMEs - particularly those that represent themselves but includes others that show reluctance to spend the additional money - is with trade mark watching. Many of these SMEs will not have set up a watching service. Owners of UK national trade marks will receive notifications from the IPO when they search subsequent applications. These may not be as extensive as a commercial watching service, but it should catch identical and near identical marks. With an SME on a limited budget in mind, it's free. Trade mark professionals can argue that the IPO's notifications are not sufficient, but the free aspect can represent value to many SMEs and we tend to have different personal definitions of "value".

What this does overlook though is Community Trade Marks. An owner of a UK national registration - or any other national registration in an EU member state (including Ireland, Sweden and those others still with relative grounds examination) - will not get notified of any Community Trade Marks even if for an identical mark with identical goods or services. If they have no watching service set up how will they find out about such a mark? If you've ever tried downloading the CTM Bulletin, published on-line every working day, then you'll know that conducting your own checks is not particularly realistic. Identical searches can be conducted periodically but you would have to remember to do them.

Nevertheless, OHIM do conduct searches - much like the UK IPO - of their own Community Trade Mark Register only and they too send notifications to the owners of these earlier marks. I understand they are looking to abolish these (this is perhaps evidence of this), but arguably it could be better to extend them. How?

Extend them by allowing owners of national registrations to notify OHIM of their rights. There could be a mechanism within TMView for doing this (so sorry owners of Greek national registrations until your country is on board you'd be ruled out). It would not need to cost anything as it would all be done on-line. It would be just as easy for OHIM to do their checks through TMView (which I imagine could easily be specially adapted for this purpose) as it is to do them on just their own Register.

Representatives could add their clients marks to this system pro-actively, particularly when they have been unable to convince a client of the merits of a watching service. This may then still give them access to avenues of possible opposition work.

OHIM may consider this as a way of helping SMEs, start-ups and those with cost constraints. It is not something national Offices can set up so while they may take the lead in meeting and educating many SMEs in their respective countries, this sort of initiative would need to be led by OHIM.

I do not believe the searches conducted are as comprehensive as a trade mark watch performed by commercial companies and I am not suggesting they are an alternative to having a proper watch in place. However, aside from cost pressures for SMEs, IPOs are not in a position to refer trade mark owners to specialist watching companies and SMEs may be reluctant to go to companies they do not know.

I should mention that the Danish Patent and Trademark Office provides a trade mark watching service as do their Swedish counterparts (neither of which are particularly cheap, I may add) but most offices do not; the UK Office has moved away from providing non-statutory, commercial services.

In conclusion, improvements to processes that make them quicker should be welcomed (when quality does not go down), but with national and Community Trade Marks working in parallel more could be done to ensure awareness if not alignment. It could be in the remit of the Convergence programme and Cooperation Fund to undertake some work in this area. National offices should bring such agenda items to the table. It's all well and good that SME owners of UK registrations can cost-effectively and quickly oppose conflicting UK applications but helping them ensure conflicting Community Trade Mark applications do not escape their radars is something that could be better addressed by the authorities.