Changes to the Examination Process on Relative Grounds

UK Intellectual Property Office will be making changes to our examination procedures on 1 October 2007.

After that date UK IPO will no longer refuse to register a new trade mark application because of an earlier conflicting trade mark, unless the owner of the earlier mark successfully opposes the new application.

UK IPO will still search the relevant registers as part of the examination process and send the applicant the results. If the examiner considers that there may be any potential earlier conflicting marks already on the register, the applicant must choose between continuing with the application, restricting the list of goods and services to try to overcome the clash with the earlier mark, or withdrawing it.

If the applicant decides to continue with the application, UK IPO will write to the owners of any earlier conflicting marks identified in the search when the application proceeds to publication in the Trade Marks Journal. UK IPO will notify the owners of earlier UK marks automatically but EU marks owners will need to "opt-in" This can be done by completing a form TM6 which will be available to be completed electronically on our website from 1 October 2007, subject to the payment of the relevant fee.

When the mark is advertised in the Trade Marks Journal, the owners of any earlier marks or rights can oppose the application if they think that the use of the new mark will infringe their earlier mark or right. If there is a successful opposition, the applicant could be liable for costs and may not be able to get their mark registered.