ECTA round table event in London to discuss and contribute to the Max Planck survey on the European Commission Study on the European Trademark System. The OHIM delegation published their contribution to the survey on January 13th 2010.
OHIM say that cluttering of the register is not a problem. They say there is no evidence. They say we are not filing cancellation actions to clear the clutter. They are right. We are not.
Cluttering is a problem both to business in Europe and to the legal system and those of us who work in it as advisors.
A prudent business man should clear a new brand before he starts to use it. Many do. Part of my workload is to carry out such clearance searches. I have a very small business but these cluttering registrations cause me problems every time I do a search. I have evidence. If I publish it I breach the obligation of confidence I owe to my clients.
Suppose I discover that a proposed brand infringes an existing registration. I advise the client of this. I suggest he might file a cancellation action. If he does he risks drawing attention to a cause of action unless he is prepared to wait for OHIM to complete the cancellation process. Business does not move that slow. Therefore no cancellation action is filed and risks are taken. If the risk comes off and likely it will, then that business man starts to lose respect for the value of my legal advice. I can only say that if the owner of the cluttering mark decides to take action there is strong prospect that infringement will be found.
There are cluttering marks that are unused and there are those that are covetous and may be used for a fraction of the specification. We have some very robust European judgements - notably that in Silberquelle C-495/07 - that recognise that covetous marks will not be enforced. Geoffrey Hobbs also waxed lyrical about relying on novel legal doctrines about abuse of legal rights to deal with these covetous registrations. I have noticed that my business clients get quite distracted when I try to explain such wondrous defences. It makes them nervous. They like to know if their defences are sure and certain.
We can understand that OHIM does not want the additional workload of investigating intention to use claims or examining evidence of use on renewal. Nevertheless it is not correct to deny the problem and the debate about possible solutions. If we do not address this the European business world will show increasing disrespect for registered trademarks. They will cease to search and take risks instead. The courts will find themselves with an increasing workload as it will become increasingly difficult to avoid commercial conflicts before they arise. In short, the best place to search for conflict will be on Google - perhaps it already is.