Guidance

Earlier rights: fact sheet

Updated 6 June 2019

1. What we will do

When we search an application, we look for earlier filed marks that may be considered confusingly similar to your mark, that operate in a similar area of goods and services to yourself.

We will search for:

• UK trade marks (UK)
• international trade marks protected in the UK (WO)

We will highlight any potential conflicting marks in your examination report. Please note you will have two months to consider how you wish to proceed.

For goods and services which are considered as similar, you may wish to view our Cross Search List.

2. Considerations for earlier rights

The Registry takes into consideration your mark as a whole and the goods and/or services being applied for. In the event of earlier marks found to be similar or identical to your application we will raise them in the examination report.

Trade marks are often registered for a wider range of goods and services than the proprietor trades in. Please note the registry does not search individual companies to determine how they are using their registered mark.

3. Extension of the two month period

You will then be given a two month period to respond to the report and have one opportunity to write to the examiner on this issue. If you do not respond within the time period then the application will continue to publication notwithstanding the earlier mark(s).

The response time can be extended if you can provide reasons for further time to deal with the earlier notifications. For example, if you decide to seek the consent of the owner of an earlier trade mark identified in the search. You will need to show the examiner that you are pursuing consent and if you need further extensions, that there is a realistic possibility that consent will be given.

4. Deciding to proceed with your application

It is up to you to decide if you want your application to proceed to publication. Please note we are unable to advise whether you should proceed at this stage and it is a business decision. If you do not reply within two months we will assume that you want us to publish your application.

5. Notifying owners of earlier marks

If we publish your trade mark, we will only notify holders of Domestic UK trade marks and International Registrations designating the UK. These marks begin with the following:

• UK….
• WO….

6. How to avoid the issue of notifications

In some instances, it may be possible to restrict your specification of goods and/or services before your application is published, by removing similar goods, services or classes from your application can overcome the requirement to notify owners of potential earlier registrations. This is not always the case, occasionally there may still be a requirement to notify owners of earlier marks if there is still a likelihood of confusion following the restriction of the specification.

You can provide your comments to the examiner in relation to the earlier marks raised which will be taken into consideration but essentially the examiner will make the final decision whether there is a need to notify owners of the earlier marks that have been raised.

If you accept that there is a conflict and wish to discuss the matter with the owner(s) of the earlier mark(s), you could approach the owner(s) to see if they will consent to the registration of your mark or negotiate between yourselves to see if there is a way to co-exist on the Register.

Alternatively, you can withdraw your trade mark application and choose another trade mark. Please note you would be required to submit a fresh application if you chose to do this

7. Appeal against the examiner’s decision

There is no right of appeal against the examiner’s decision as the notification of earlier rights does not prevent your application proceeding to publication. Whatever you decide to do you must do it within the period the examiner allows (two months), unless you request an extension to get consent from a third party to the registration of your trade mark.

In the case of a notification of earlier right only you can just:

proceed to publication regardless of the earlier rights

or

restrict the specification so the earlier rights are waived

or

request consent from the owners of the notified earlier rights to the registration of your trade mark

or

withdraw the application.

Please note, this is not an exhaustive list of options. It is possible to receive an opposition from any third party, regardless of whether they were raised within the examination report.

8. What you can no longer do to overcome notifications

You are not entitled to request a hearing to argue against the issuing of a notification to an earlier right holder. This is because new rules state that no party is entitled to be heard in respect of any decision to notify either party of the earlier right. Hearings will not take place in respect of notifications raised on relative grounds.

You can no longer file evidence of Honest Concurrent Use at examination stage to avoid the need for a notification to be issued. This is because Section 8 is now in force which repeals Section 7 of the Act which catered for the filing of Honest Concurrent Use

9. Potential opposition

When your mark is published in the Trade Marks Journal, the owners of any UK, or international marks protected in the UK (marks which start with the prefix (WO), will be notified.

Any third party can object to your trade mark, including those not notified. Please note, if you receive a notice of threatened opposition the onus is on you to contact the earlier right holder to try and negotiate or reach an agreement before the end of the opposition period.

10. Options available if you are opposed

If a third party wishes to threaten to object to your application they may contact you direct or through the UK Trade Mark Registry. When a third party threatens your application via the Registry the period of publication is extended by one month and you are notified of the potential opposition by us. You can attempt to negotiate a resolution with the third party, but if this is not possible you can withdraw the application or go through opposition process.

If you decide to withdraw your application after we have received an opposition you will have to pay costs to the opponent. But, if you have demonstrated that proceedings were launched against you with no warning, giving you no chance to negotiate or reach a compromise without legal proceedings then there will be no award of costs issued against you.