Since October, this practice has changed. the Registry no longer cite these marks as a barrier to registration. Instead, applicants are informed of the prior rights are can elect whether to withdraw their application or not. If they choose to go on with the application, owners of the prior rights are informed of the application and can elect to oppose the application if they so wish. This brings the UK system into line with the EU (CTM) system.

The most immediate impact has been on the improvement in speed with which applications now move through the Registry. Because the Registry no longer challenges an application, but leaves it up to the owner of the prior trade mark right, applications rarely get halted at the Registry any more. In the past, it was certainly standard for the Registry to object to a mark because of prior marks and then for agencies like ours, or the trade mark applicants themselves, to spend months arguing with them over the merits of the citations.

One notable feature of the new rules was for marks that were able to take advantage of the changeover in October. All marks that had been applied for in the preceeding few months before the changes went live and had received notice of citations from the Registry were able to elect to wait until October. As a result, we as a firm had over 30 marks that were able to make this election. Of these, not one of the marks which had citations against it from the Registry were opposed by prior mark holders. In our opinion, this demonstrates a clear sign that the Registry had always been over zealous in its treatment of the prior rights and that when it came down to it, the marketplace is a much better judge of whether new applications pose a threat to existing rights holders.

As a result of the changes, it is now imperative that rights holders employ a trade mark watching system to flag up any new applications going forward. Rights owners also have to be clear about which new marks they see as causing them a problem and which ones they feel are necessary to oppose.

These are interesting times generally for rights holders, what with changes at Registries and the likes of Google keeping everyone on their toes re adwords trade mark changes in the UK. Brand owners should develop a clear policy as to how they protect and manage their rights and implement that policy consistency and flexibly.