07/02/2008

Establishing a brand has become increasingly important in our commercial climate. Although a brand is more than just a trade mark, there is no doubt that a trade mark lies at the heart of a brand. 

Think McDonalds and you picture golden arches; think Nike and you picture the famous swoosh. And just as important as establishing a brand is protecting it. 

A key element of protection is to register your trade mark, and a recent announcement by the UK Intellectual Property Office (IPO) will mean registering a trade mark may now be quicker than ever.

Following on concerns made in the Gowers review on intellectual property published by the Treasury last year, the IPO are offering a fast-track examination option on trade mark applications. 

This will speed up the first stage of a trade mark application. 

This is where an IPO examiner examines the application to check it meets statutory requirements and that goods and services are correctly classified.

Currently, this stage can take up to two months, but, under the new fast track procedure, an examiner will report back within ten days.

However, there is an additional fee of £300 for fast tracking an application and this may be higher depending on how many classes you are seeking registration in. 

And it should be stressed that this fast tracking only relates to the initial stage of the application process (although the IPO are planning to consider if other stages could also be addressed).

If an examiner provides a clear report then the application will be advertised in the Trade Marks Journal for a period of three months during which time any interested third party can lodge objections. If no rejections are received the application will be granted. 

So, currently, the process can take around six months from initial application to obtaining the registered trade mark certificate.

However, what tends to cause delays in applications is when the examiner raises issues in the examination report which require to be dealt with. 

This can take many months of discussion and correspondence with the examiner and often require a hearing.

The fast track option will have no bearing on how long this part of the process will take, nor will it affect matters if a third party raises objections during the advertisement stage.

It remains to be seen how popular this new fast track option will be. As the fee is more than double the basic fee for a registration, some may feel that benefit of reducing the process by around five-six weeks is outweighed by the additional cost. 

The procedure is also not available to an application for a series of marks, as the IPO feel they require more time to consider the individual marks in a series properly. 

However, for those requiring the protection of registration as a matter of urgency, the recent announcement will be welcome news.

Andy Harris, associate at Tods Murray LLP, specialising in IT/IP and E-Commerce

* Send your Scottish media news and gossip, in the strictest confidence, to  info@allmediascotland.com