Major changes to UK trademark law mean that businesses will need to be much more vigilant if they have trademarks registered in the UK.

From 1 October 2007, the UK Intellectual Property Office will examine UK trademarks on the basis of ‘absolute’ grounds only, which assesses whether they are distinctive and suitable for registration. This is a major departure for UK trademark procedure. Previously, trademark applications could be turned down if it was felt that they posed a commercial conflict with an existing trademark.

Consequently, businesses will need to be much more proactive to prevent new and similar trademarks being registered in the UK.

Although existing UK trademark holders will be warned of a new trademark application (which will give them time to lodge an opposition), it is not yet clear how thorough this service will be.

Keith Hodkinson, a partner at trademark and patent attorney firm, Marks & Clerk in Leeds, comments:“No one wants a rival’s conflicting trademark to slip through the net and existing trademark holders cannot afford to be complacent. The effectiveness of the new procedures will depend on the comprehensiveness of the searching and monitoring by the UK Intellectual Property Office. Increasing proactivity will be vital on the part of trademark owners themselves and we strongly recommend that our clients budget for trademark watching services. The changes to UK trademark procedure create a stronger case than ever for these services, and mean trademark registrations will be comprehensively monitored not only in the UK but internationally too.”

The changes in UK trademark law will only affect trademarks that are registered in the UK, rather than European Community trademarks. Firms which operate and focus their brand protection in the UK will be most affected, as well as those that use the UK trademark system for ‘additional security’ of their trademark rights.

•Date: 25th Sept 2007• Region: UK •Type: Article •Topic: Operational risk
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