Intellectual Property | News

Friday 7th March 2008

From 6 April 2008, it will be possible, on payment of an additional fee of £300, to request a fast-track examination of a UK trade mark application. This has the potential of reducing the overall time taken from filing to registration from at least 6 months to around 4 months. However, the system being introduced is one of fast-track examination, not fast-track registration and, in the majority of cases, the standard examination service will remain the most cost effective way of making an application.

Standard Examination Service

Under the standard service, it usually takes from at least 6 months from the date of filing an application to attain registration of a UK trade mark although it will take longer if the UK-IPO raises objections to the mark or if a third party opposes it. This compares favourably with a number of other registration authorities but, in response to the Gowers Review on Intellectual Property, the UK-IPO consulted on and has now introduced a fast-track examination system available from 6 April 2008.

Fast-track Examination Service

Under the new service, on payment of an additional fee, it will be possible to ask for a fast-track examination of a trade mark application. This will mean that an examination report will be provided within 10 business days of the application being made (compared to the usual period of around one month under the standard service). If this deadline is not met, the fast-track fee will be refunded.

If there are no objections to the application, it will then proceed to publication in the Trade Marks Journal where it will become subject to the usual 3 month opposition period. If there are objections to the application, the UK-IPO has indicated that it will attempt to deal with all correspondence and hearings as quickly as possible.

Conditions for fast-track examination

In order to obtain a fast-track examination report, the following conditions must be met:

• The application must be filed online.
• The fees must be paid for in full at the time of making the application. The fee for fast-track examination is £300. This will be on top of the standard application fee of £200 and any class fees (£50 per additional class). For example, a fast-track application for one mark in 3 classes would cost £600 (as opposed to £300 for the standard service).
• The application must be for a single trade mark, not a series of marks.

Could it be done any quicker?

A time reduction of only two months in an overall process that is already very speedy is likely to mean that take-up of the fast-track service initially will not be significant, unless there is a pressing business need. However, the UK-IPO is considering other ways to speed up the registration process, including consulting on the 3 month opposition period (which all applications are subject to, whether fast-track or not) and improving its IT systems. We will report on these developments in due course.

If you would like further information on fast-track applications or any other aspect of our Intellectual Property practice, please click here.