Is the trade marks system working for you?

The UK Patent Office is considering whether to change its way of examining trade marks and harmonising to the European system. Lawrence Smith-Higgins looks at the implications.

The brand name of your business or products plays a major part in your success. Your customers know you by your trading name. But the way that trade mark applications are handled could be changing and the Patent Office wants to know which direction businesses would like it to take.

When you build up a brand, the registered trade marks of a company can be worth a lot to the business. Customers equate them with your company's reputation or the success of your products. They are an indication of your success in the marketplace and can be bargained with or sold to build revenue. Therefore finding the right brand names and protecting them as registered trade marks is key when you are starting a business.

In a few years time, The Patent Office could be taking an approach to the trade marks application procedure, which is currently used by the majority of intellectual property offices in Europe. The agency wants to know if it should use the same methods as the Office of Harmonization for the Internal Market (OHIM) in Alicante which handles community trade marks. It is running a pre-consultation with businesses to find out the parameters for their consultation.

The way the system evolves will be crucial to small businesses as the UK Patent Office currently provides some services in the application process that are helpful to them.

When you apply for a trade mark in the UK to protect your company name or a product name, the Patent Office checks to see if it is confusingly similar with any existing trade marks registered in the UK or Europe. If a mark is considered confusingly similar to an existing, registered trade mark the Patent Office will not register it. In the OHIM system the same checks are made but they merely advise the applicant of any confusingly similar registrations. The mark is still registered by OHIM and it is up to the concerned parties to take any appropriate legal action. The differences in the systems are highlighted by statistics that show that only 3% of nationally registered marks face opposition processes while this rises to 20% of Community marks.

Under the current UK system, once you have gained your registered trade mark, you also know that the Patent Office is checking any new applications to see whether they would conflict with yours. Although trade mark owners are advised that they should still police their trade mark rights, this system provides an element of comfort knowing that the Registry will not register any marks which are considered by an examiner to be confusingly similar.

There are also some disadvantages of the current system as well. Applications are over 50% more likely to face an objection on relative grounds compared to a typical customer for the Community mark. By raising the objection and preventing the registration of the mark, the examiner may be preventing businesses from reaching mutually beneficial agreements that allow both marks to co-exist on the register. Also applicants to the UK system can often find it hard to understand why their application has been rejected when conflicting marks in the Community system are allowed to be registered.

The Patent Office is keen to strike the right balance for applicants and wants to develop a system which suits all businesses. To contribute to the pre-consultation process, visit the Patent Office dedicated section at: www.patent.gov.uk/about/consultations/relative/index.htm The closing date for comments is 7 October.