Practice Amendment Notice

PAN 2/03

Period of Time Allowed for Responding to Objections Raised by the Office in Examination Reports

1. The period of time allowed for applicants to respond to examination reports raising substantive objection or requirements for registration is to be changed to three months except in cases which consist of, or include, a substantive objection on relative grounds, where a period of six months will continue to be allowed.

2. These changes, which come into effect on Monday 1 September 2003, are intended to reduce the time taken to refuse applications for trade marks which are non-distinctive or inherently deceptive. Such applications have the greatest capacity to create uncertainty in the market place about whether (and how) descriptive and non-distinctive signs may freely be used in trade. The changes therefore pursue an aim which is in the public interest.

3. It is noted that OHIM allows only two months for applicants to respond to official objections on these so-called absolute grounds. The above changes will therefore also bring the UK Office closer into line with the practice at Community level.

4. The Registration Practice Working Group has been consulted about this change. The representatives of the interests on that group argued strongly that more than three months was required, particularly to deal with official objections on relative grounds (which are not a part of the Community Trade Mark system) where letters of consent often have to be obtained from the proprietors of earlier trade marks. The change described above seeks to take account of this concern.

5. Extension of time requests will continue to be treated on their merits.

6. Any queries regarding this notice should be sent to Allan James at the following address:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: +44 (0)1633 811056
Fax: +44 (0)1633 811175