Showing posts with label abuse. Show all posts
Showing posts with label abuse. Show all posts

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 www.ipo.gov.uk : 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