It is now possible to file a fast track UK trade mark opposition following the introduction of new procedures on 1 October 2013. The fast track option includes a reduction in opposition filing fees payable to the UKIPO as well as a shorter time frame between filing the opposition and a final decision being made.

The fast track procedure has been introduced in response to a consultation by the UKIPO, the results of which suggest that many believe the standard opposition procedure is too costly and time consuming. The fast track is intended to make trade mark oppositions more accessible for individuals, micro businesses and SMEs.

The main features of the new system are as follows:

• Opposition fee of £100, rather than £200 as is the case for the standard opposition route.
• Opposition proceedings are expected to be concluded within six months of filing the opposition, rather than 12-18 months as is typical for the standard route.
• Restricted grounds upon which opposition can be based. In particular, a fast track opposition may only be based on:

(i) an earlier identical mark protected in respect of identical goods or services;

(ii) an earlier identical mark protected in respect of similar goods or services, where the similarities are such that there is a likelihood of confusion on the part of the public; or

(iii) an earlier similar trade mark protected in respect of identical or similar goods or services, where the similarities are such that there is a likelihood of confusion on the part of the public.

• Restricted number of earlier marks upon which opposition may be based. In particular, a maximum of three earlier marks may be used as the basis for the opposition. In contrast, there is no limit to the number of marks which may be included in the opposition under the standard opposition route.
• If any of the marks upon which the opposition is based are over five years old, it will be necessary to file proof of the use made of the marks at the time of filing the opposition.
• The filing of evidence, other than for proof of use, will be the exception, and requests to file evidence of fact must be supported by compelling reasons.
• Decisions will normally be taken from the papers on file, but if either party wishes to request an oral hearing it must explain why such a hearing is necessary and proportionate to the cost to both parties.

If your trade mark application is opposed by an opponent using the fast track route, you will be notified at the time you are notified of the opposition. It appears that there will be scope under the new system for switching from the fast track route to the standard opposition route. In particular, it appears that grounds may be added after the opposition is filed which fall outside of those allowable for a fast track opposition. Under such circumstances, the opponent must pay an additional fee of £100 to the UKIPO.

At Wilson Gunn, we have extensive experience of successfully filing and prosecuting trade mark oppositions as well as successfully defending against oppositions, for small and large clients alike. We also have extensive experience across the range of other trade mark matters and we strive to ensure that the advice we deliver is commercially focused.

If you would like more information on the UKIPO fast track trade mark opposition procedure, oppositions generally, or have any other trade mark related queries, please do not hesitate to contact us on +44 (0)161 827 9400 or email info@wilsongunn.com.