Thursday, 17 January 2013

Abuse in the World of Trade Marks

From Lakewoodrat on Flickr
I was intrigued to see that ITMA had announced a lecture in Manchester by the renowned London  IP QC Michael Edenborough on the intriguing subject of Abuse in Trade Mark Actions. Rather than risk a trip to the frozen North I cast a fly on the wall and this is what it reported.

Michael was his usual cheerful and exuberant self.
His preliminary messages were that
  • we are all practitioners (so let's find a route to what the client wants to achieve) and
  • let's appreciate that law is not always "black-letter-law" (clearly clear and right) : it can also be " grey-letter-law " (unclear) and even "white-letter-law" (assumed to be right but, in fact, untested).
Michael had chosen with care examples which built on these foundations :
1) He went back to 2003 and the decision in Omega to explain how inadequacy in a pleading (revocation proceedings : TMA 1994 section 46) resulted in TPN 1/2005 and the Registry's requirement for the applicant (in revocation proceedings based on non-use) to plead expressly the date from which revocation ought to take effect.
But the " rabbit out of the hat " (my expression and not Michael's) is the Sabatier case (No. 82 673 of 31st January 2007) being a Decision of the Registry not (apparently) to be found on the website at : it runs counter to TPN 1/2005 in allowing pleadings to claim " rolling " dates as dates from which revocation ought to take effect.
 If you have a case pleaded under section 46(1)(b) TMA 1994 and the Registry insists on TPN 1/2005 : do not be afraid to take up your sword and cry " Sabatier " !

2) Omega stayed in the news in the context of a further " go " at pushing back the date from which revocation ought to take effect. This time – the court says " should have been argued in previous (revocation) proceedings " and this new litigation is an " abuse of process ". We have " abuse " as a shield for the defendant (Ed: Omega cases are many: this is 2004 EWHC 2315 (CH) Rimer J)
3) In the context of challenges to a Decision of OHIM, always remember that you need a " point of law " to justify an appeal from (now) the General Court to (now) the Court of Justice. Otherwise, you'll find the Court of Justice providing a " Reasoned Order " as an end to proceedings.
Michael brought the mark PURE DIGITAL into his thinking on this issue. Surely (we all believe) the practitioner can only bring " evidence of use " to the table where that " evidence of use " relates to period prior to the date of Application ? But might this be "white-letter- law"(see above) ?
Why not argue that – at each stage – the relevant tribunal (OHIM's Examiner / OHIM's Board of Appeal / General Court / Court of Justice) MUST take account of the post-Application use
of (in the particular case) the mark PURE DIGITAL ?
Why not – in support of this – bring to the Court's attention Paragraph 2.61 of the Max Plank Institute's Report of 15th February 2011 ?

If your client's concern is (dare we say it ?) that the mark stays " live " in the records of OHIM for the maximum period of time and you have such an argument (on a point of law) that's going to achieve this (rather than attract a Reasoned Order on an earlier date) : surely you (again) have a sword you should take up on behalf of your client ?
4) Back to the UK and the case of Special Effects : bringing grounds used in opposition proceedings before a court of law in subsequent infringement proceedings in not a problem.
But – don't forget things may be otherwise in proceedings for invalidity.
The Spam / Spambuster case in 2005 went against the party taking a " second bite of the cherry " (again, my words and not Michael's) when the first attempt at claiming revocation had failed (and this was the case even though the " second bite " was on different grounds).
The Firecraft case in 2010 went against the defendant who wanted to say " passing off was established in opposition proceedings at the Registry " and " we want to argue against passing off now we're defending an action in the High Court ".
For the claimant, what had happened previously was (in these latter cases) a sword for their cause !

5) Threats (per TMA 1994) bring their own " abuse " concerns.
 In 2004 Reckitt Benkiser found an action defended and there arose, as part of the counterclaim, the issue of seeking to join solicitors to answer a " threats " allegation : joining solicitors as a party requires permission from the court and permission was refused as an abuse of process.
Without prejudice correspondence is, in this context and others, an area which needs careful consideration :
- some ten years ago, courts refused to consider " threats " issues when " the threat " appeared in without prejudice correspondence [ Unilever v Proctor & Gamble ]
- more recently (2011), a court isolated " the threat " from correspondence that was without prejudice – making " the threat " actionable (and suggestion was made obiter  that the rule on without prejudice correspondence (being a rule protecting disclosure adverse to interest) should not  provide a shield against the impact of the " threats"  provisions of the TMA 1994) [ Best Buy v Worldwide Sales ]

On the future of threats – review is part of The Law Commission's Eleventh Programme of Law Reform and a Report is scheduled for March 2014.

Clearly those Mancunians had a fortifying lunch and my fly deserves hearty congratulations

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