I haven’t had time to mention my trip to LA which was interesting on many counts. Unfortunately have no time to do more than touch on it in this post because am short of time. I have a new website going live later this month which is taking up loads of time, and am grappling with ordinary workload, staff absences on holiday, and the after effects of being away at INTA in May and LA in June!
Two points stood out for me from the trip as regards IP practice. One is that in the USA IP is regarded as an extremely high risk area of work, and it can be almost impossible for niche practices to get insurance apparently. What is even more surprising is that your risk profile is improved if you can do a proportion of non IP work. To my mind the risk of being negligent or would Decrease rather than Increase the more specialised you were so why the insurers see it differently baffles me. They must know better, so if anyone has thoughts on this point I would love to hear them.
The other striking point that emerged during the trip is that the majority of practitioners who have become wise to the risks of signing trade mark forms on behalf of clients now refuse to do so. They will NEVER sign a trade mark form, preferring to post it to the applicant to sign him or herself. So, I intend to adopt this practice despite the many inconveniences this will cause, including the introduction of paper into our otherwise paperless office. But what else can one do given that the UK IPO will now only allow a form to be filed online if one ticks a box stating that ‘The trade mark is being used by the applicant or with his consent, in relation to the goods or services stated, or there is a bona fide intention that it will be so used’. In fact if I had time I would take this up with the UK IPO, as it seems a retrograde step which will discourage online filing. Any thoughts on this would be most welcome.
Two points stood out for me from the trip as regards IP practice. One is that in the USA IP is regarded as an extremely high risk area of work, and it can be almost impossible for niche practices to get insurance apparently. What is even more surprising is that your risk profile is improved if you can do a proportion of non IP work. To my mind the risk of being negligent or would Decrease rather than Increase the more specialised you were so why the insurers see it differently baffles me. They must know better, so if anyone has thoughts on this point I would love to hear them.
The other striking point that emerged during the trip is that the majority of practitioners who have become wise to the risks of signing trade mark forms on behalf of clients now refuse to do so. They will NEVER sign a trade mark form, preferring to post it to the applicant to sign him or herself. So, I intend to adopt this practice despite the many inconveniences this will cause, including the introduction of paper into our otherwise paperless office. But what else can one do given that the UK IPO will now only allow a form to be filed online if one ticks a box stating that ‘The trade mark is being used by the applicant or with his consent, in relation to the goods or services stated, or there is a bona fide intention that it will be so used’. In fact if I had time I would take this up with the UK IPO, as it seems a retrograde step which will discourage online filing. Any thoughts on this would be most welcome.
I know a number of US attorneys who will never sign an application form but also others who will, provided they have a sufficient relationship of trust with their overseas clients. Essentially, the US attorneys I use know that I will have explained to any US applicant the implications of the statement of use or intent to use the applicant is making. I would never risk getting them involved with a bar ethical issue and there is no point in getting an invalid US registration for a client. However, when I am not entirely convinced of an applicant's intention to use or use - it is always very useful to be able to ask them to sign the form themselves.
ReplyDeleteOf course, there is no statement of use for a community trademark application.
Personally, I support the retention of the statement of use in the UK even though it puts us in a rather exclusive club with the US Canada and Singapore. It does encourage people to file sensible specification rather than claiming the whole world.
My point is more that the system should not require the attorney to sign the form just because they are filing online. I don't know the ins and outs of the US system but they are able to file online and yet get the client to sign the use declaration. In other words, their online filing system is flexible enough to allow them to file online REGARDLESS of whether they will require the client himself to sign the declaration. The UK system as it now stands will force the attorney to ONLY use paper if they are not willing the sign on behalf of the client, and that is what I strongly object to and would like to see changed.
ReplyDeleteI think that if you explained/showed the declaration to the client - for example by sending the drat TM3 - you could put his name in the declaration box and he would have "signed" it.
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