The examination process that UK trade mark applications must go through has just become a lot simpler, bringing the UK Registry into line with the European Community Trade Marks Office (OHIM).
The UK Trade Marks Registry will no longer refuse to advertise trade mark applications in situations where the mark applied for conflicts with an earlier trade mark. This is a major change in the practice and role of the UK Registry.
All UK trade mark applications will continue to involve a search of earlier trade marks, but, if an earlier application or registration is identified which the UK Registry considers to be confusingly similar to the mark applied for it will no longer refuse the new application. Instead, the owner of the conflicting earlier trade mark must file an opposition to seek to prevent the application proceeding to registration.
Under the new system the UK Registry will notify applicants of the results of its search and, if the applicant elects to proceed even though a conflicting earlier trade mark has been identified, the Registry will then notify the owners of any conflicting earlier marks – the owners of conflicting UK trade marks will automatically be notified, but only those owners of existing earlier European Community trade marks or International Madrid registrations who have opted in to the new notification system will be notified. The owner of a conflicting earlier trade mark must then decide whether to file an opposition, to oppose the application proceeding registration.
Although the new examination practice does not officially come into effect until 1st October 2007, the UK Registry has started the transition already. Applicants with pending UK trade mark applications which have only been objected to on the basis of a conflict with an earlier trade mark are now being offered the option of ignoring the objection and choosing to proceed under the new examination practice. This results in the pending application being suspended until October, following which the application will be advertised and the owners of the conflicting earlier trade mark/s notified under the new system.
The assessment of whether there is a likelihood of confusion between two trade marks under the new system should better reflect the actual position in the marketplace as opposed to the current purely theoretical assessments made by trade mark Examiners, which have been making it increasingly difficult to obtain a UK trade mark registration. However, we have to hope that the UK Examiners will not decide to spend their new found time raising more objections that trade marks are descriptive or lack distinctive character. | 
