UK IPO update on the speed of contentious trade mark proceedings

UK IPO update on the speed of contentious trade mark proceedings

In the context of global IP disputes, the UK Intellectual Property Office (UK IPO) has historically been viewed as a quick and efficient forum for resolving disputes. Unfortunately, over the last few years we have seen the UK IPO struggle with increasing workloads. The impact has been felt particularly keenly by those dealing with long delays in contentious trade mark proceedings.

The UK IPO has recently updated its website to include information about current timeframes for contentious proceedings, revealing that wait times can now be up to 30 months from initial filing to decision.

Current timelines

According to the UK IPO website the estimated overall timescales for trade mark opposition and invalidity proceedings are:

• 19 months from filing a claim to receiving a decision from the papers (i.e. without a hearing)
• 30 months from filing a claim to receiving a decision following a hearing

These timelines assume there are no additional delays such as cooling-off periods, stays, or extensions of time. Since these additional delays are common, the reality is that, on average, proceedings are likely to take longer than is outlined above.

The new guidance also indicates that it is currently taking:

• Eight months from the date a hearing is requested for the hearing to be listed
• A further three months from the date the hearing is listed until the date of the hearing
• Ten months from the date of the hearing (or from the filing of written submissions) until the issuance a decision

It has always been the case that proceedings which are listed for a hearing take longer than cases decided on the papers, but it is clear that hearings are currently extending the length of the overall proceedings by nearly a year as opposed to the two to three month delay we have experienced historically.

The report indicates a significant backlog of pending decisions which goes some way to help us understand why parties are experiencing such significant delays, as there are nearly 800 cases currently awaiting a decision.

We have historically seen notices from the UK IPO indicating that the increased workload caused by Brexit is partially to blame for the backlogs, but the time has surely come that the UK IPO must accept that the increased number of contentious proceedings filed over the last few years is the “new normal” and it will need to implement a long term strategy for dealing with these levels.

Future improvements

Clearly work is being done behind the scenes and some headway has been made to deal with delays. According to the latest statistics, currently 90% of oppositions, invalidity actions and defences are being processed within ten days of being filed. As recently as early 2025 the delay in processing new forms was at least a month so there has already been a significant improvement on casework processing. The following targets have also been set for long term improvement of the situation, suggesting that the UK IPO has a strategy in place. We assume that this involves the hiring and training of more Hearing Officers, but understandably it is going to take time to get on top of the current delays. The UK IPO’s current goals are:

• For decisions to be delivered within six months by July 2027
• For decisions to be delivered within three months by March 2028

The ultimate goal of decisions being issued within three months of a hearing date by March 2028 reflects historical UK IPO timeframes and will return the UK IPO to its pre-Brexit position in terms of the timeframe for contentious proceedings.

Practical implications

We have already seen examples of one party to proceedings choosing to request a hearing instead of proceeding on the basis of written submissions as a delay tactic, or a way of buying further time for parties to try and negotiate at the last minute. As delays gradually increase, we anticipate that this tactic could be adopted in more cases. This will only increase UK IPO waiting times for hearings even further thus causing a vicious cycle that the UK IPO might struggle to break free of unless it can train more hearing officers and get on top of current delays. It is hoped that this tactic will not become commonplace and that the UK IPO will be able to gradually reduce delays and meet the target it has set itself for returning to decisions being issued within three months of a hearing by March 2028

These extended timeframes have significant implications for businesses involved in trade mark disputes, particularly in the case of businesses who choose to delay the launch of new products until they are certain they have secured a trade mark registration. Lengthy proceedings can lead to uncertainty for trade mark applicants and should be factored into an IP filing strategy with a view to conducting clearance searches and filing new applications at as early a stage as is possible during the development of new products and business offerings.