Have your say on IPO fast track trademark opposition procedure

No items found.
​
April 15, 2013
#
Trademarking
Table of contents
  • Toc Heading
  • Toc Heading

The Intellectual Property Office (IPO) has launched a public consultation on their plans for a simplified and more cost-effective trademark opposition procedure to run alongside the existing system.

Trademark holders, legal professionals, and others with an interest in trademarks are encouraged to have their say on the proposed procedural changes before 17 May 2013.

The changes would see the introduction of an opposition ‘fast track’ procedure within the Trade Mark Tribunal. This would only be open to brand owners seeking to oppose applications for new trademarks which are same as, or confusingly similar to their registered marks. More complex cases requiring the submissions of evidence would still need to use the existing procedure.

In addition, the plans would see a higher, refundable appeal fee for inter partes appeals to the Appointed Person. Head of EIP Brands, Simon Stanes has produced an executive summary of the proposals and issues involved.

The stated aim of the fast track is to improve access to opposition proceedings for SMEs by reducing their cost and complexity, whilst also increasing their speed. However, it does not appear that any detailed research has yet been carried out by the IPO. The extent to which the proposed fast track system could be used to block applications without providing the opportunity for a full defence remains unclear.

The IPO specifically invites comments from SMEs who have been discouraged from filing oppositions due to the cost and time involved or who conversely are happy with the current system.

It is vital that brand owners make their views known to the IPO, as the results of the consultation process are likely to be used as justification for any changes that are finally made.

Email the IPO with comments to: FastTrackOppResponses@ipo.gov.uk

Recent Case Reports

See all Case Reports

UPC Court of appeal issues final decision, despite no finding on infringement at first instance
30 March 2026
In Rematec v Europe Forestry, the UPC Court of Appeal overturned the Mannheim Local Division’s revocation of the patent and, applying Article 75(1) UPCA, issued a final decision on both validity and infringement despite no infringement finding at first instance. The Court adopted a narrower, description‑led approach to claim interpretation, confirmed the patent’s validity, found infringement, and granted final remedies without referring the case back to the Court of First Instance.
​
Litigation insurance as security for costs
30 March 2026
In Syntorr v Arthrex, the UPC Court of Appeal clarified that while litigation insurance is not itself a form of security under Rule 158 RoP, it is a relevant factor when deciding whether security for costs should be ordered at all. By failing to consider the claimant’s insurance policy, the Munich Local Division wrongly exercised its discretion. The Court set aside the €2 million security order and confirmed that insurance can mitigate concerns about cost recoverability.
​
National law applies to claims for loss of profit if the events occurred before the UPC came into force
30 March 2026
In Fives v REEL, the Hamburg Local Division of the UPC dismissed a standalone damages action despite prior findings of infringement. Although the UPC was competent to assess damages, the court held that national law applied because the relevant events pre‑dated the UPC’s entry into force. Applying German law, the court found that the claimant had not proven causation or lost profit, highlighting the demanding evidentiary burden for price‑reduction damages claims and the importance of substantiating counterfactual tender outcomes.
​