Intellectual Property – affordable justice?
There have been a number of recent changes in the IP world in the UK – with the intention of making IP claims more affordable and accessible to rights holders.
The Intellectual Property Office (“IPO”) already encourages direct lay applicants to try filing trade mark and registered design applications themselves (with varying success) and, as part of this policy, they have just introduced a less expensive “Fast Track” opposition procedure in trade mark matters.
For only £100, trade mark owners can now file certain types of oppositions against the filings of other persons and, usually, such cases will be decided simply by an Examiner of the IPO on the papers – with no need to file additional evidence or make arguments in writing or at a hearing. No longer will there be any need for detailed witness statements to be produced in such cases. The initial Opposition form will have to give more information about the use that has been made of the earlier right than the old form did but – in most cases – that will be all that will be required from the opponent .
These Fast Track Oppositions are only possible in the most straightforward of cases – where the earlier rights holder is claiming that the application that is being opposed is either identical or similar to the opponent’s earlier mark – and covers some of the same or similar goods or services.
But – beware! A Fast Track Opposition cannot include a claim on the basis of earlier passing off rights at common law, bad faith or copyright – amongst others. Although the Fast Track may be straightforward and ideal in some cases, care must be taken not to fail unwittingly to claim a potentially stronger ground for opposition.
In order that trade mark owners will be informed of the advertisement of other trade mark applications for identical or similar trade marks which they may wish to oppose, we recommend that they put their marks on a trade mark watching service. This is an inexpensive way of receiving email alerts of the advertisement of trade mark applications and is a safer method than just relying upon notifications of conflicting marks issuing from the IPO itself (as they do not always).
Also with effect from 1 October, the Patents County Court changed its name to the Intellectual Property Enterprise Court (“IPEC”)and increased the Small Claims track thereof to cover claims of up to £10,000. The Small Claims track is intended to benefit SMEs and entrepreneurs with the lowest value IP claims, for example, the photographer who finds his image reproduced without his consent – and costs orders are highly restricted.
The IPEC Small Claims track is only available for certain types of IP cases: copyright, trade marks (both UK and Community Trade Marks), passing off and unregistered design right (UK and Community unregistered design right). But, where appropriate, a final injunction can be obtained, very inexpensively and reasonably efficiently.
Patent and registered design cases cannot be brought in the Small Claims track of the IPEC and will still have to be dealt with by the High Court or the streamlined multi-track of the IPEC.
BRANDED! are happy to advise in respect of potential claims in any of the above venues – should you not wish to take the plunge alone! And, of course, we are happy to be brought on board at a later stage in an action, should the need arise, or if you find yourself on the receiving end of an opposition or infringement claim!
Please contact Carin Burchell on 01904 476388 or firstname.lastname@example.org for a preliminary consultation.