UK IPO is proposing preliminary indications
To meet the increasing demand for its services the UK IPO will trial the reintroduction of preliminary indications.
The UK IPO reports that demand for its tribunal service continues to grow, a trend that is likely to continue following the end of the Brexit transition period.
To help meet future demand the UK IPO has said it intends to reintroduce preliminary indications for a trial period of six months. During the trial, the UK IPO will track the drop off rate of oppositions which have been subject to a preliminary indication as well as gathering customer feedback.
No date has been set for the start of the trial, we will let you know as soon as we know more.
The new process would target oppositions based solely on Section 5 grounds, but only those relating to the likelihood of confusion. Any cases including additional grounds (reputation, passing off, bad faith etc) would be excluded.
A preliminary indication would not generally include cases where proof of use is determinative, though, a preliminary indication could still be given where an earlier trade mark is more than five-years-old but there is clearly no likelihood of confusion.
No preliminary indication would be provided where there are any other circumstances where evidence would be determinative (such as a claim to enhanced distinctiveness through use).
Finally, no indication would be given where the matter is borderline, or where the hearing officer otherwise considers that a fully reasoned decision would be beneficial to the parties. The hearing officer providing the preliminary indication would also, should the case proceed to the evidence rounds, issue the final decision.
The parties would receive a letter outlining the preliminary indication. This will include reasons but not full reasoning. The level of detail in this respect is still to be determined but will likely include the nature of the confusion, whether direct or indirect.
The UK IPO has said there will be more information about the new process soon.
The provision of preliminary indications is outlined in the Trade Marks Rules 2008 as follows:
19.—(1) This rule applies if—
(a) the opposition or part of it is based on the relative grounds of refusal set out in section 5(1) or (2); and
(b) the registrar has not indicated to the parties that the registrar thinks that it is inappropriate for this rule to apply.
(1A) This rule shall not apply to fast track oppositions.
(2) After considering the statement of the grounds of opposition and the counter-statement the registrar shall send notice to the parties (“the preliminary indication”) stating whether it appears to the registrar that—
(a)registration of the mark should not be refused in respect of all or any of the
goods and services listed in the application on the grounds set out in section 5(1)
or (2); or
(b) registration of the mark should be refused in respect of all or any of the goods and
services listed in the application on the grounds set out in section 5(1) or (2).
(3) The date upon which the preliminary indication is sent shall be the “indication date”.(4) Where it appeared to the registrar under paragraph (2) that registration of the mark should not be refused in respect of all or any of the goods or
services listed in the application on the grounds set out in section 5(1) or (2), the person opposing the registration shall, within one month of the indication date, file a notice of intention to proceed with the opposition based on those
grounds by filing a Form TM53, otherwise that person’s opposition to the registration of the mark in relation to those goods or services on the grounds set in section 5(1) or (2) shall be deemed to have been withdrawn
(5) Where it appeared to the registrar under paragraph (2) that registration of the mark should be refused in respect of all or any of the goods or services listed in the application on the grounds set out in section 5(1) or (2), the applicant
shall, within one month of the indication date, file a notice of intention to proceed on Form TM53, otherwise the applicant shall be deemed to have withdrawn the request to register the mark in respect of the goods or services for which the registrar indicated registration should be refused.
(6) A person who files a Form TM53 shall, at the same time, send a copy to all other parties to the proceedings.
(7) The registrar need not give reasons for the preliminary indication nor shall the preliminary indication be subject to
What was the UK IPO’s experience was of the operation of the preliminary indication (PI) system when it was first introduced some years ago?
Preliminary indications were first introduced in order to reduce the time and money incurred by parties (particularly private litigants) in proceedings which evidence was not a key requirement.
In other words, for cases where evidence was unlikely to play a part in the final outcome (5(1) and 5(2)) they would speed matters up. In turn they were intended to reduce Registry time and resources by disposing of cases more efficiently.
However, the number of cases which didn’t proceed was not as high as anticipated or hoped and therefore the process was discontinued.
What are the drivers behind the proposal to reintroduce the system?
The drivers are:
1) the huge increases in applications being filed and the resources required to tackle these new applications
2) the anticipated workloads from Brexit
3) the hope that PIs will be more persuasive for parties to seek ADR.
The UK IPO is looking to continually improve the way it manage our work and how we deal with surges in workload. The UK IPO said it knows that around 70% of applications are filed by private litigants (it was around 50% when did PIs first time around) and so a mechanism for oppositions to be disposed of earlier and more cost effectively can only be regarded as a positive.
Further, in relation to private litigants there is a larger proportion of them opposing marks than there were when we had PIs first time around. The UK IPO is looking at tweaking certain aspects of the PIs in the hope that they will be more effective. It would welcome any views you may have.