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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Resolving Brand Disputes on the Fast Track

Streamlined procedures are enjoying a new and rather vibrant lease of life on the English legal scene. The launch of simplified procedures in the Patents County Court (PC) in 2010 made it possible for parties of all sizes and means to enforce and defend IP rights cost-effectively and with limited costs exposure. Now, the PC is moving up the ladder to the High Court, and the UK-IPO is stepping in with its own fast-track trademark opposition procedure.

 

The PCC's promotion reflects its impressive success as a forum for resolving lower-value IP disputes since its new procedures were introduced in October 2010. On 1 October 2013 the PCC will be reconstituted as a new specialist list in the High Court with a new name, the Intellectual Property Enterprise Court (IPEC), that more properly reflects its ability to hear all types of IP disputes.

This long-awaited change in status puts the court at last on an equal footing to the rest of the High Court and resolves minor jurisdictional problems that had arisen from its former status as a county court. The cost benefits and procedures that have made the PCC so attractive remain essentially unchanged, and the IPEC's launch marks a welcome new phase in making the enforcement and defence of IP rights possible for smaller and medium-sized entities, in particular.

The UK-IPO, too, has been looking for ways to make dispute resolution quicker and cheaper for parties, and to that end has introduced a new fast-track trade mark opposition procedure. Effective from 1 October 2013, fast-track oppositions will allow earlier right owners to oppose new UK trade mark applications based on claims to identity or confusing similarity with up to three prior registered or pending marks. Hallmarks of the new procedure are its default preference for decisions based on written submissions, without evidence or a hearing.

Fast-track oppositions are uncharted territory, however, and the UK-IPO's procedure is much more restrictive than the streamlined procedures applied by the former PCC and the new IPEC. Procedural questions are likely to abound. Moreover, while a fast-track opposition may well suit an opponent with limited means, it is unclear how many applicants will be content to allow a case to be decided without the benefit of evidence or an oral hearing when an important new brand is at stake. Satellite disputes about the need for evidence and hearings, and all the concomitant costs arising from such ancillary disputes, are likely to arise. Parties with the means to pursue an ordinary opposition based on proportionate evidence and the benefit of an oral hearing before the decision-maker (an option ruefully unavailable in practice before OHIM) may not see much benefit in the fast-track, which some might see as unnecessarily hamstringing their options.

Regardless of the take-up for fast-track oppositions, these reforms nonetheless reflect a welcome trend in the UK and Europe for proportionate, cost-effective procedures for resolving IP disputes. The availability of high-quality simplified procedures for use in appropriate cases encourages innovation, since smaller, less well-funded right owners will know that there is a means by which they can still enforce and defend their rights.

Streamlined procedures will never be appropriate for all cases; "bet the farm" disputes and more complex matters may be better contested on normal procedures, whether in court or before the UK-IPO. However, the availability of proportionate alternatives for the right cases is unarguably sensible; when properly applied, they can mean that everyone wins.