On its website, the United Kingdom IPO has published a new Tribunal Practice Notice (TPN 2/2009) concerning a new practice concerning the issuing of preliminary indications in opposition proceedings (Rule 19 Trade Marks Rules 2008). The new TPN reads as follows(highlighting by Class 46):

Tribunal Practice Notice (TPN 2/2009)

Opposition proceedings - Preliminary Indications Rule 19 Trade Marks Rules 2008

The purpose of this notice is to advise parties of a new practice concerning the issuing of preliminary indications in opposition proceedings.

Current Practice

Where the grounds of opposition include sections 5(1) or (2) of the Act, the Registrar has the power, under rule 19 of the Trade Marks Rules 2008, to issue a preliminary indication. The purpose of the preliminary indication is to provide the parties with an indication on a prima facie basis as to the likely decision in respect of those grounds of opposition. The indication is given to assist parties in deciding whether to continue with the opposition or the trade mark application, or whether to try and seek an amicable settlement to the dispute.

New practice

With effect from 11 May 2009, new forms TM7, (Notice of opposition and statement of grounds), and TM8, (Notice of defence and counterstatement), are introduced. The new forms will allow the parties to request that a preliminary indication is issued and the Registrar will take account of the parties’ wishes before deciding whether to issue an indication. This means that preliminary indications will no longer be issued on a routine basis. However, where the circumstances justify it, the Registrar may still issue a preliminary indication in a particular case, even without a request from the parties. Further, the Hearing Officer may also decline to issue an indication where one is requested if he or she considers that, even on a prima facie assessment, the outcome of the opposition on the relevant grounds is too finely balanced to make any useful prediction.

The Registrar will continue to accept the existing forms for a further one month period expiring on 11 June 2009."

• Class 46: please click here to read the Trade Mark Rules 2008.