On 1 October, the UK Intellectual Property Office will change the way it examines trademark applications. New applications will no longer be refused in cases where there are earlier, conflicting trademarks. Instead, it will be up to the owners of the earlier marks to oppose applications.
The examiner will search for earlier registrations and send the applicants the results. If conflicting marks are found, applicants must then choose between continuing with their applications, withdrawing them, or restricting the scope of their applications. If applicants decide to continue, the Intellectual Property Office will write to the owners of the earlier, conflicting marks, who will have to decide whether to oppose the applications.
The owners of UK marks will be informed automatically, but charities with EU Community Trade Marks will need to opt in if they want to be notified. Charities that fail to do so may find that the value of their trademarks has been undermined by unnoticed applications.
In early 2008, the power of the Charity Commission to require charities to change their names will be amended by the Charities Act 2006. Among other things, such decisions will be subject to appeal to the Charity Tribunal.
From 1 October 2008, the Companies Act 2006 will enable charities and other organisations, including those that are not established as companies, to object to the names of new companies on the basis that they are too similar to the existing organisations' names. These disputes will be heard by new 'company names adjudicators'.
Charities should review their trademark protection strategies, opt in for notification of conflicting applications where necessary, consider how best to check for objectionable new company names and decide whether further trademark applications are needed.
It is important to remember that registration with the Charity Commission or Companies House does not confer exclusive legal rights to the use of names.
- Shivaji Shiva is a partner in the charity team at Russell-Cooke solicitors