Trade Marks (Relative Grounds) Order 2007

rose to move, That the Grand Committee do report to the House that it has considered the Trade Marks (Relative Grounds) Order 2007. The noble Lord said: The order will change the procedures for registering trade marks in the UK to make them fairer. The proposed change is both deregulatory and harmonises the procedures for registering national trade marks with those that business encounters when registering Community trade marks. The order has been subject to extensive consultation with rights holders, prospective rights holders, legal professionals and their representative bodies. The Intellectual Property Office first engaged its users through a pre-consultation exercise to find out what they regarded as the strengths and weaknesses of the current system of registration. It then formally consulted about what the future examination policy should be. Finally, it consulted again about the form of the order before the Committee. Around 70 per cent of those who responded about the examination policy felt that a move to some form of ““search and notify”” opposition regime was necessary. That level of support represents not only the professional legal opinion of the trade mark world; the same level of support came direct from the small and medium-sized enterprises that responded. In the trade mark registration regime currently operated by the Intellectual Property Office, the balance is skewed significantly towards the protection of earlier trade marks. That means that earlier trade marks are protected automatically, regardless of whether their owner has any concern about a prospective new trade mark registration and regardless of whether the earlier mark itself continues to qualify for protection by virtue of its genuine use. At the same time, new applications face an increasingly difficult time in achieving national registration due to the number of blocking registrations they face and the time and cost involved in overcoming them. A majority of those blocking registrations are Community trade marks, which, because of different registration procedures at the Community trade mark office, have not been vetted to see whether they conflict with earlier national marks or with earlier Community marks. That is resulting in some whose business is solely conducted in the UK, and for whom the most appropriate protection therefore lies in obtaining a national trade mark, seeking instead to register their trade marks as Community trade marks simply to avoid the effects of the national registration procedure. That costs more and runs the risk of unnecessarily embroiling the trade mark owner in litigation elsewhere in Europe. If nothing is done, the problem will only worsen. In the Government’s view, the solution is to adopt a system whereby it is left to the owners of any earlier marks or rights to object to new national trade marks. After all, it is the owner of the mark who is best placed to judge whether a new trade mark is likely to affect his intellectual property. Furthermore, it is the owner of the mark who is best placed to show that it meets any use conditions imposed by the law. There is a powerful argument that the owner of the mark has most responsibility for acting to protect his own property. The order will introduce such a system. The Committee will note, however, that the order provides that the registrar may continue to conduct a search of the relevant registers for the purposes of notifying persons about the existence of relevant earlier trade marks. The search results will be sent to applicants for new trade marks so that they can assess for themselves the risk of successful opposition and decide whether to proceed. If the application proceeds, the owners of earlier marks who appear to have an interest will also be notified. The office has worked with interested parties, including the Institute of Trade Mark Attorneys and the Chartered Institute of Patent Attorneys to ensure that the order before the Committee is workable and equitable to all parties. I therefore commend the order to the Committee and I beg to move. Moved, That the Grand Committee do report to the House that it has considered the Trade Marks (Relative Grounds) Order 2007. 17th Report from the Statutory Instruments Committee.—(Lord Evans of Temple Guiting.)