Alert 373 - Europe - Shorter time limits for trade mark oppositions in the UK


The United Kingdom Intellectual Property Office (UKIPO) issued a practice note last week (TPN 4/10) which has an impact on the calculation of deadlines in trade mark opposition proceedings before it. The TPN came into effect on 30 September.

Background

The Trade Mark Rules 2008 provide that the period for opposing a UK trade mark application is two months beginning with the date upon which the application is published. The term can be extended for a further month if an application for an extension is filed before the original two month period expires.

Historically the two month opposition period has always been calculated to include the corresponding date in the second month after publication – for example, if an application was published on 15 September 2010, an opposition could be filed (or an extension of time to oppose requested) up to and including 15 November 2010.

The change in practice

The UKIPO has decided that with immediate effect the deadline for filing an opposition (or a request for an extension of time within which to oppose) should be the day immediately prior to the date two months after publication. In other words, under the example given above, the deadline would be 14 (not 15) November.

This change applies to the initial opposition only and does not affect the calculation of dates for filing the counter-statement, or seeking extensions of the cooling-off period. It also applies only to UK trade mark applications or International (Madrid Protocol) applications which designate the UK.

Trade mark applicants should ensure that they make the necessary changes to their records as quickly as possible.