The UK Intellectual Property Office (IPO) is inviting comments on whether it should reintroduce the fast-track trademark examination procedure.
The fast-track service was first launched in 2008 following recommendations laid out in the Gowers Review of Intellectual Property 2006. In 2009 it was suspended due to disappointing take-up, and because the IPO was examining within five to 10 working days using its standard procedure at the time.
Therefore, the office said, the £300 premium for the service, on top of a £200 application fee and any additional class fees at £50 each, was “difficult to justify”.
Fast-track service users would receive results of the office’s search for conflicting marks and registration objections within 10 business days.
While the service was available, the IPO received an average of 20 fast-track applications a month, compared with 2,600 standard applications.
Lord Marland, then Minister for Intellectual Property, raised the idea of reintroducing the service in late 2012.
A spokesperson for the IPO said: “Since 2009, the IPO has received an increase in trademark applications each year and subsequently examination time has fluctuated over this period. However, the introduction of a new electronic case management system, in April 2013, has resulted in applications again being examined in approximately 15 days.
She added: “The IPO believes that it is an appropriate time to ask users whether there is a need to reintroduce the fast-track service.”
Chris McLeod, director of trademarks at Squire Sanders and first vice president of the UK Institute of Trade Mark Attorneys (ITMA), predicted there would not be much demand for the service if it is reintroduced, and said he would be surprised if it returned.
“Users voted with their feet and the IPO apparently decided that it wasn’t worth continuing to offer it last time,” he said.
“I couldn’t see myself recommending it to clients.”
He said that the IPO’s regular examination speed is still quite fast, albeit slower than it once was, and would recommend “as a rule” filing in the UK first rather than filing for a community trademark.
“Given the opposition period, there is still a limit to how quickly you can get your mark registered.”
McLeod added that ITMA will respond to the IPO’s invitation by submitting comments on behalf of its members, and will encourage members to make their own responses.
The IPO said that “all interested parties” are welcome to submit their comments before April 15.
This article was first published on 19 February 2014 in World IP Review
UK IPO, fast-track examination, trademark examination, Gowers Review of Intellectual Property 2006
