Update on the Notification system for Community Trade Marks (TM6)

• The Intellectual Property Office (IPO) conducted a consultation on the future of the notification system for owners of Community trade marks in March 2010. The consultation period closed at the beginning of June.
• The Government’s decision to introduce a temporary freeze on new IT projects in the civil service however, means that the IPO is unlikely to know until around September 2010 whether it will be permitted to continue the project to replace its current trade mark IT systems. As the cost of building additional functionality to provide for CTM owners with a notification system, and the level of fees likely to be required to pay for the work, is an important aspect of the matter, no decision should be made on the case for, or the timing of, the proposed legislative changes until it is clear whether the project to replace the existing trade marks IT systems will proceed at this time.
• The Trade Mark Rules specify a three year term for CTM owners to receive notifications following their opting into the system. The first opt-ins took place on 1 October 2007.
• The net effect of the above is that a decision will now need to be taken as to the position of those CTM owners who opted into the notification system in October 2007 before any changes are made in the Trade Mark Rules either to curtail the opt-in provision or else to introduce a formal renewal system.
• We therefore propose to proceed in the interim as follows:
  
  -  In accordance with the existing Rules, all cases that have opted in to receive notifications, which have been in
     place for three years, will no longer receive any notifications when the three year period has expired. In effect
     this will mean that any case that opted in on the 1 October 2007 will automatically be opted out on the
     2 October 2010 and so forth.
  
  -  No renewal notices will be issued to those CTM holders who have opted into the notification system.
  
  -  The period for CTM holders receiving notifications of later national trade marks can be extended by a further
      three years by repeating the opt-in process by filing another e-TM6 via the IPO website;
  
  -  It is anticipated that any case can be renewed for a further three years prior to its expiry from mid September.
     A further notice will be issued when this is possible.
  
  -  It will be also be possible for CTM owners to opt-in to the notification system for the first time.
  
  -  It should be noted however that the law in this area is currently under review and therefore the existing three
     year term for receiving notifications may be curtailed by subsequent legislation.
  
  -  If the provision of notifications to CTM holders is removed, the IPO will give good notice of any such removal.
  
  -  Once a final decision has been taken on this facility a further general notice will be issued and a notice on the
     TM6 form will advise any potential customers of the position.
  
  -  Nothing in this notice affects holders of national trade marks or international trade marks protected in the UK,
     who will continue to receive notifications of later potentially conflicting trade marks.
• If you have any queries regarding this notice, please contact us.