Buying Time for Christmas: a guide for UK Trademark Opponents and Applicants

This is the season when many trademark agents look at their docket and realise that some of those imminent deadlines (and maybe even ones early in the New year) can't possibly be met now that their clients have run off to enjoy the Thanksgiving holiday without providing the material that is needed for their evidence in a UK opposition.

If you read The  Manual of Trade Marks Practice  - the bible of practice published by the UK IPO -  Paragraph 4.9.1 of the Tribunal Section chapter at page 438, you will obtain the impression that extensions are not readily available:

"The timetable is to be adhered to. It provides more than enough time, in the vast majority of cases, for facts or submissions pertinent to the pleaded grounds to be gathered and presented to the Tribunal. Parties should not regard this timetable as a ‘starter for ten’, to be varied at a later date. The Tribunal will, in exceptional cases, consider requests to extend the time allowance. Such requests will need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence. The Tribunal will also need to be satisfied that the extra time is warranted in the context of the pleaded grounds and what is necessary to determine the case efficiently and fairly."

Therefore a trade mark applicant might reasonably expect things to move along. For the new business applicant this can be necessary, especially if there are investors concerned about a shadowy or real threat of infringement proceedings following on from a successful opposition.

If you read the cases published on extensions you will find this hard line endorsed.

But wait. This is not the full picture.The decisions on extensions that are published are the ones where a refusal of the extension decided the whole case. If the extension is allowed the reasons don't get published. This is an omission that could be rectified if interim hearing decisions were published.

In ZILLION O-193-16 Ann Corbett refused a retrospective extension of time. It was a cancellation action, rather than an opposition and it would have been possible for the case to be re-started. Nevertheless, Ms Corbett held

"Despite the fact that evidence has now been received, and notwithstanding that this may lead to the commencement of another action between the same parties covering essentially the same subject matter (a matter on which the applicant may wish to consider seeking professional advice), I was not persuaded, in the circumstances of this case as set out above, that the requested extension of time should be granted. The request was therefore refused."

Note that these were litigants in person and you, my friend, are more likely to be a professional and know that you regularly get extensions with the flimsiest excuses if the evidence is in by the time of the hearing and there are other grounds so that the case will not close. If you have  a decent reason and can show reasonable efforts you are even likely to get the extension in response to a request without a hearing.

If the UK Registry provides an indication that the extension will be allowed there is absolutely no point in the other party objecting. It will be futile and will simply increase their costs and costs exposure. Never do it. Hearings arise when the UK Hearing Officer is minded not to allow the extension. When the requesting party would prefer the initial indication be maintained they will likely put some effort into preparing for the hearing. The first thing to do is ask your counterpart if they plan to have evidence submitted in time. If they do, back off and forget it. Of course they may deceive you, which is unprofessional, or simply not answer.

If you fail to have the evidence ready for the hearing life can be harder as even a professional representative found in ALOHA  where on 27 April 2016 Heather Harrison refused an extension to an opponent without completed evidence, with this level of reluctance:

Whilst I am satisfied that the reasons in support of the original extension request were sufficient to justify the length of time granted, nothing has been provided to persuade me that the opponent has taken any steps to finalise its evidence in the intervening period. Whether the parties continue to negotiate is clearly a matter of uncertainty. In making my decision, I have kept in mind that an apparent lack of diligence by a party does not mean that an extension cannot be granted. I have also considered Ms Hobbs’s request that I impose a further, final deadline and I have some sympathy for her position. However, in the absence of any information about the current state of the opponent’s evidence, let alone an assurance that it is near completion and will be filed imminently, it would not, in my view, be appropriate to allow the opponent further time

Once again this decision only came to be published because it led to closure of the opposition file.

You should copy the other side and the Manual suggests in bright green letters

"Failure to Copy to the Other Side or to Provide Detailed Reasons Will Result in Refusal of the Extension."

This is also not true, but why risk it.

There are also alternatives to an extension. If there are negotiations or you could initiate some, you might be able to persuade the other side to agree a stay. That has the bonus of not requiring a fee, but you do need consent and you still need to support it with convincing reasons for the request. Turn to page 439 and section 4.9.2 of  The  Manual of Trade Marks Practice  .

So if you need to buy time, remember:

• your reasons
• your fee (yes sometimes lazy opponents try to avoid the fee - a retrospective request also costs more)
• that you do need to have the evidence complete before any hearing
• it would be helpful to have some non-evidential grounds and a reasonable prospect of being able to start over

Is a Registered Trade Mark a Defence?

Always good to have a shield. C info

Sally Cooper reminds us that here in the United Kingdom, we have a provision of the Trade Marks Act 1994 (section 11(1)) which says :

 "A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)"

This contrasts sharply with the the position of a Community Trade Mark in the UK. The ruling of the Court of Justice in the European Union which, in C-561/11 of 21st February 2013 [Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza] which says :

"Article 9(1) of the [ Community Trade Mark ] Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand".

Now we have Marques reporting on 27th September 2013 a decision from the Spanish Supreme Court delivered on 24 July 2013 (Editorial Prensa Canarias, S.A. v. Radio Pública de Canarias S.A.) declaring that no infringement of trade mark rights will be established against a defendant that is using a (later) valid trade mark registration. The UK and Spain singing in harmony – who else ?

Barbara Cookson adds: Such an attitude  in Spain keeps the opposition practise in the national office vibrant. Hopefully the Fast Track Opposition procedure in the UK with a reduced £100 fee and the new Form TM7F introduced today will save some trademark claimants the trouble of having to invalidate infringing trade marks on the national register.

It seems to me to be good advice for anyone concerned about possible infringement to file their UK trade mark to establish a first line of defence. Even though the CTM at only three times the cost, covers so much more territorial, it cannot provide a shield. However if the brand bully has a CTM the UK mark is no defence either.

Merging, Converging or Diverging -: the concept of Complementary Goods and Services

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This started off as an idea for a post by Sally Cooper to illustrate the theory that services can be complementary to goods and so confusingly similar. Everything is a service in the world of converging technologies but in the old world we mostly just had goods.

Even so, the goods we buy do provide us with services. I love Sally's example which illustrates how different parts of the relevant public perceive the same good:

Whilst putting this note together, I keep thinking of coats (as in coats you wear – rather than coats of paint). As a young person, you buy a coat because it looks good / the price is right / it suits you. As an old person, you buy a coat because it looks good / the price is right / it's likely to last for a long time. In youth, the item is definitely " goods ". In maturity, the item is more "service " than "goods". So perhaps "complementarity " (and I claim credit if I've invented that word) is (in some form) always with us ? And (in the trade mark context) maybe we need Decisions to prompt thinking on whether "Merging" is still moving down the line – or has moved so far down the line that we've arrived at "Merged" ?

In a recent opposition decision - that would have been fast-track had we had them already (Ms Al Skilton – the Hearing Officer - is designated to hear all early Fast-Track Oppositions) - Sally was successful in persuading the hearing officer that software programming and design services were similar to computer software. If you turn to paragraph 39 of that decision you find the very reasonable assessment:

"Dealing first with the applicant's computer software, software is the end result of software design and/or programming service. Such a relationship, which is complementary, is likely to be one where the average consumer regards the same undertaking as being the provider of both the goods and services."

Looking back in the decision, I see that the Hearing Officer very properly reminded herself about the European case law on the subject of complementary goods and even quotes from El Corte Inglés v OHIM Case T-420/03,
“96(sic -its paragraph 98)...goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (Case T-169/03 Sergio Rossi v OHIM-Sissi Rossi [2005] ECR II-685).”

However we see that this idea of complementary goods has diverged in European jurisprudence from the broad relationship that Sally envisions. The concept seems to be carefully limited so in another El Corte Inglés case T-39/10 (under appeal)  we find "By definition, goods intended for different publics cannot be complementary."

Nevertheless we can confirm that the jolly similarity tool  from OHIM does say that 'computer programs' in class 9 are similar to 'design and development of computer hardware and software' as having the same purpose and public and being complementary (factor 4 from the famous early Canon decision - not that you got much guidance about what it meant in 1998 its just a word in paragraph 23 ) On the other hand wine glasses are not similar to wine, however much they may complement each other. So complementarity is never enough alone.

Sally recalls that it was some twenty years ago (so 1993) that a conference in Manchester (directed at "entertainment") brought Cd's (new technology – before DVDs) to the attention of those attending. Cd's were head-lined as the music-carriers of the future. But the company that stole the headlines at the conference was not a music company – it was OCEAN (wikipedia : "one of the biggest video game developers / publishers of the 1980s and 1990s"). The music people had not thought things through – CD-content was not limited to music. This "technologies are merging " awareness played out through many years afterwards, and (inevitably) the law followed (or did it - says the Duck). Some fifteen years later, in the trade mark context, the Decision I was looking for on "technologies" went on record, being the Decision of the First Board of Appeal at OHIM in 2009 [ Case R 1215/2008-1 ]. The marks were identical CLIMAX. The Applicant's goods in Class 38 (simply "broadcasting services") and in Class 41 ( "(amongst other things) television programming services; production of television programmes ") came up against opposition from a barrage of " (electronic) games " goods in Class 9 and related "(electronic) games" services in Classes 41 and 42. The gem from this decision is : " a product covering essentially the same subject-matter will be complementary to the rendering of the service, particularly where it is offered by the same undertakings to the same consumers " [ paragraph 20 ]. The Opponent's " games [ goods and services ] " prevailed (in context) against the Applicant's " broadcasting / television " services. Product and service were complementary.

The jolly similarity tool is still (just) on side accepting that games software has a low degree of similarity with entertainment.

How far do you think this complementarity should go?

Fast Track UK Trademark Oppositions

My 40 UK Oppositions OUT

The UK IPO are running a fast consultation on revising (again) the UK trademark opposition procedure.

I did a little survey of my files. If you can't measure it in UK IP policy, it doesn't exist so we must provide evidence even if its only a measured anecdotal sample. So this is what I can say about UK oppositions over the last several years. I have dealt roughly with twice as many outgoing ones as incoming ones 40:19 and the number I have let go to a decision by the UK IPO is tiny at 5 and only one of those went to an appeal. In OHIM the ratio was 65:49

The parties involved are not all SMEs by any means but a reasonable proportion are and whatever the size of the client it generally makes sense in the UK to settle because going the whole way is costly, slow and not that much fun.

My 19 UK Oppositions IN

How does your experience compare?

This doesn't tell us much about the trademark owners who didn't do anything so its always good to review.

Some Registry ideas are

• Lower fee
• Proof of Use with TM7
• Relative Grounds only
• TM8 retained
• Separate arguments stage in writing
• No hearing
• An Appeal Fee to keep appeals down

OHIM can be made to produce fast cheap decisions using a file it and leave it approach using only CTM grounds. My strategy as an applicant is one observation only and you can even forego that with a reasonable prospect of success in some cases.

There is one little diamond lurking in this consultation that I hope will survive and that's the Appeal Fee. £800 would be about right. 

My first reaction is that the fast track opposition won't work and just makes life more complicated, but is it worth getting together to have a discussion about it?

Quality Trade Mark Representation

As we face the next Great Depression, most of us are thinking of ways to make sure we have a good client base and an excellent reputation that will see us through. Our problem is to make the relevant public look for us.  Qualified and Professional advisers in trademark matters usually means a specialist IP solicitor or a "Registered" Trademark agent. Anyone can represent a trademark applicant. Its just like will writing. Its not regulated. Unlike will writing its likely to stay that way.

Is this the Great Depression?

Reading a recent UK-IPO decision, I noted that the hearing officer had said "This is a case where every step has been unnecessarily protracted, by sniping and nitpicking." One of the parties was unrepresented, the other was represented by a named person, Mr Whyatt, not on the solicitor's register nor on the ITMA list of experts but he is a public access barrister so that should be even better, but nevertheless he got some serious criticism:

"Mr Whyatt would appear to be disingenuous and verbose in his response, and has managed to extend his counterstatements to cover seven pages (2052091) and eight pages (2307158) when both could easily have been answered in two pages."

The impression I get from the IPO is that they are not happy with the quality of representation and I don't think its limited to just this case. Is there anything we can do about it to help clients look for advisers that will offer them an efficient, well-informed service designed to achieve a reasonable result in the least time in order to allow the client to get on with his business. I want to see a quality standard so that an unrepresented person will know he is better of represented. Can we perhaps design a Quality Pledge a contract between client and representative to smooth things along. Maybe

• You will give me all the facts
• I will provide a clear indication of your chances of success
• We will agree capped budgets for every stage
• I will not take any step in the action without your knowledge and approval
• We will look for every opportunity to settle that is consistent with the budget
• I will keep the pleadings short and the evidence focused on the issues
• I will admit the obvious facts and not deny the undeniable
• You will do your very best to get the evidence we need together in a timely manner
•  I will ask you to pay costs orders

Equally there may be things the representatives and clients want from the Hearing Officers , so what about a debate to discuss it?

Representation in UK Trademark Oppositions

The clock is ticking at Greenwich rather than the IPO

Two newly published Tribunal Practice Notes from the UK IPO suggest that there may be problems arising due to the reduced numbers of parties taking the opportunity to have professional representation before the tribunals during Oppositions. The first notice TPN 1/2011 concerns editing of specifications where only part of the specification has been opposed; and the second TPN 2/2011 case management and the dreaded extension of time requests.

Dear Trademark Applicant /Opponent:
Yes it is possible to represent your own business. Some business managers even find it fun and challenging. However it is distracting you from your day job and you may be better off seeking out help from one of the many good IP law practitioners out there. If you are confident enough to have a go yourself, then you are clearly competent to negotiate a fixed price deal with a professional. If you must oppose - oppose everything. It can always be cut down later. However a long- winded opposition may not be the best way to deal with a real commercial problem. Spend the time to establish what you want and need and then consult a professional to see if you can achieve it.


Meanwhile are there other solutions the IPO should be looking at. Appointing some legally qualified hearing officers from the junior bar or retired solicitors and using case management more actively to get cases mediated or resolved without evidence. More interlocutory hearings on extensions cannot be the answer as this merely adds to the cost and the acrimony.

And the profession? do we need to go the Quality Solicitors route with Quality Trademark Professionals?

LES and ITM A combine to present Licensing Seminar

Two professional bodies have come together to create a seminar on Trademark Licensing on 16 November 2010. Cambridge SOLO group member Roman Cholij, an active member of bother the Licensing Executives Society and ITMA  has been busy putting together this promising half day event and it is still possible to book. The programme is laid out on the ITMA website here along with a  registration form.

Paul the Octpus by Tilla from Wikipedia

The location is the RIBA building at 66 Portland Place. A brisk walk up from Oxford Street tube and time over your lunch break before registration to check out the shopping.

So whether you want to draft licences for dead Octopi, Pauline or otherwise - there is a case study on licensing image rights; or extend your client's brands into new territories, this is a good opportunity to hone your drafting skills and make sure your clients are well protected.

Gives you a nice start for the new CPD year if you are a solicitor or a good finish to the account for the IPReg counters. I look forward to seeing a few SOLOs in person as it seems to me those of us truly working unsupported is getting smaller.

UK relative grounds opposition changes: did they change your life too?

Way back on 1 October last year, the UK IPO changed its practice regarding trade mark oppositions on relative grounds. Instead of examiners using their own judgment and initiative and deciding that an applicant's mark was confusingly similar to another mark already registered, a notice-based procedure was implemented (see here for details). This change was the subject of a very enjoyable meeting of the SOLO IP group at the rather cosy offices of London law firm Collyer Bristow. Anyway, to cope with an expected tidal wave of inter partes oppositions, some extra Appointed Persons were appointed so that appeals against the extra number of oppositions could be expeditiously dealt with.

Is there any evidence, real or anecdotal, that the number of inter partes oppositions based on relative grounds since 1 October has (i) gone up, (ii) gone down or (iii) gone nowhere? Do let me know, either by posting a comment below or by emailing me here.