Field Fisher Waterhouse launches new fixed fee products in response to changes to the way trade marks are protected
10 December 2007
Field Fisher Waterhouse LLP has launched two
new fixed fee products to help businesses protect their brands and
trade marks. PreFix and OppoFix are innovative products to
help trade mark owners deal with trade mark applications that
conflict with their earlier rights in the face of the recent
changes to the UK trade marks system.
The changes, which were introduced on 1
October, mean that companies are no longer able to rely on the UK
Intellectual Property Office (“UK-IPO”) to protect their trade
marks. Previously, the UK-IPO would have provisionally refused any
application that conflicted with a business’s trade mark rights on
‘relative grounds’. The onus was then on the applicant to overcome
the refusal by, for example, demonstrating there was no likelihood
of confusion with the existing mark.
Now this won't happen: it is up to the trade
mark owner to object to any conflicting applications. The UK-IPO
will inform the applicant of any conflicting marks, however, if the
applicant still decides to go ahead with the registration it will
no longer be refused on the basis of ‘relative grounds’.
Businesses will now need to be more proactive
to protect their brands and SMEs in particular are likely to
require legal advice in this area more than before. In response to
this need, Field Fisher Waterhouse’s Trade
Mark and Brand Protection Group has launched the following:
PreFix: This product involves
the firm contacting the owners of trade mark applications that
conflict with the client's earlier rights as soon as the conflict
is identified. The client's rights are set out and require that the
conflicting application is either withdrawn or limited, as
appropriate, failing which an opposition will be filed.
OppoFix: This offers a fixed
fee to cover an entire trade mark opposition in the UK. This
includes: filing an opposition, including preparation of the
statement of grounds; payment of the opposition fee; reviewing the
counterstatement (first response) filed by the applicant; reviewing
the preliminary indication issued by the UK Intellectual Property
Office and continuing the proceedings; reviewing basic evidence
filed by the applicant; filing brief submissions in support of the
opposition; and reporting the decision.
Trade Mark and Brand
Protection partner, Mark Holah said:
“We believe that both PreFix and OppoFix are unique in the UK
marketplace - we do not know of anyone else willing to charge a
fixed fee that covers the entire UK trade mark opposition process.
Our aim is that these products can be used to try and minimise the
effect of the recent changes on your trade mark budget.”
For further press information please contact
Louise Eckersley or
Scarlett Yianni.
Notes to editors:
PreFix costs £200 + VAT – the firm will write
to the applicant of the conflicting mark and deal with their
response.
OppoFix costs £950 + VAT, where the
application to be opposed covers the identical trade mark and
identical goods/services to those protected by the trade mark
owner's earlier mark. Where either or both of the trade mark and
goods/services are similar to the earlier trade mark, rather than
identical, then more detailed submissions will be needed. As a
result, the fixed price here is £1950 + VAT.