Watch out when making your mark online | 12 May 08

COMPANIES looking to protect their product names and brands can now take advantage of improvements announced by the UK Intellectual Property Office in the procedure for applying to register trade marks online.

The Intellectual Property Office, which grants intellectual property rights such as trade marks and patents, has introduced the improvements on its website to help speed up the trade mark registration process.

The most important change is a new fast track examination procedure. For an additional fee of £300, the UK Intellectual Property Office will examine the application and send its report to the trade mark applicant (or their representative) within 10 business days from the first business day on which the application was filed.

This contrasts with the turnaround time of approximately one month that the current standard examination procedure takes.

This could be important where the owner of a new product brand is looking to launch it within a short timescale and needs to know whether the brand is capable of being protected as a trade mark.

However, intellectual property experts at North law firm Ward Hadaway warn that while the application process itself appears easier, there are potential pitfalls for the unwary.

Alex Shiel, head of intellectual property at Ward Hadaway, said: “The improved online application form and the IPO’s fast-track service should speed up the trade mark process and is likely to make it cheaper.

“However, those looking to get trade marks for their products, brands and designs need to be aware that it is not all plain sailing even with the improved application process.

“Strict rules covering trade mark infringement remain in force, as do rules governing challenges to trade marks.

“The procedure relating to the advertisement of trade mark applications in the Trade Marks Journal and the three month period allowed for oppositions still applies in the same way as to a standard trade mark application and brand owners, therefore, still need to ensure that clearance searches have been carried out before any trade mark application is filed.

“With this in mind, companies should still take a ‘safety first’ approach to trade marks and get thorough professional advice on all aspects of the issue before they proceed with their application.”