Keeping the UK Trade Mark Register pristine

I am sure that many times you click the link to VIEW OWNERS OTHER MARKS and you don't always get what you expect. Strangely your trade mark seems to a lone wolf. Don't be misled? Many trade mark owners never bother to synchronise their portfolios.

Even though the UK -IPO do not charge a fee for the update of a name or address using a Form TM21A most representative's will charge for the update. Making this type of change is currently fairly time consuming for an owner or his representative. I have just spent 40 minutes from start to finish dealing with one simple change. If I had done the same thing at the EU IPO it would be all sorted in maybe 4 - or perhaps two times that because I did the change of representative on my UK case at the same time and that would have been a separate operation prior to the name change at EU IPO.

So because its really nice to View owners other marks and because its even nicer to offer owners a free service to make these simple updates - could we ask the smart masters of the website to consider whether the next form to migrate to being online could be the TM21.

It might need some added security as we don't want incorrect updates to be registered and being fee-free might allow some nefarious activity to take place. However I am sure that could be managed. I have no evidence that EU IPO have suffered unduly from false amendments.

With many trade mark owners reviewing their portfolios in readiness for #Brexit this would be a good time to make this available.

What do folk think ? would this improve the service to both the public and the trade mark owners.

Use it AND Lose It: Trade Mark lessons from Cambridge University

A very respectable number of SOLO practitioners forgathered on Saturday in Cambridge for the CIPIL Annual Spring Conference which addressed the question "Use it  or Lose It" across the range of intellectual property rights from trade marks, through patents, to copyright and related rights. The event was expertly chaired by Mr Justice Richard Arnold who provided his own incisive commentary on the presentations.

You might think that it was obvious that governments grant monopolies to be used, but intellectual property law has become so convoluted that even this simple tenet can no longer be assumed and there was much to discuss.

This note only addresses the trade marks presentations and more specifically some issues that arose in the presentation by Appointed Person: Emma Himsworth QC . She addressed the issue of whether, when word marks are registered, use in a variant form is genuine use. Did the figurative fig leaf ( a term created by Mr Justice Arnold in his Starbucks decision of 2012 (it was noted that there is an appeal to the Supreme Court on that case to be heard on 25 March 2015 but it considers other aspects and the fig leaf remains firmly in its place in the firmament of IP case law) alter the distinctive character of the plain word.

In a straw poll of the audience we were prepared to accept that use of Catwalk (right) would be use of the word. But it was not. Geoffrey Hobbs' September 2013 decision is here. It was admitted that "the evidence was disastrous" was a major factor with no evidence of oral use or on invoices in any of the cases. Our chairman also felt that none of them had much distinctive character in their own right.


 The audience was in agreement that the sideways rabbit mark would not so easily be recognised as the word mark CB. That decision was made by Iain Purvis in June 2013.

Following down the catwalk was Amanda Michael's decision where HOME MAID was considered not used when represented in either of the forms shown.

As a result we were left with the conclusion that it was a case of Prove you are using it or lose it. Its simply not enough to use your mark, you must be able to show probative evidence of use preferably as registered with sufficient indications of the place, time and extent of use. Its got to be clear, precise and detailed and if the use is limited, you must dispel any doubt as to its genuineness with additional evidence. In a final gleeful addition, Ms Himsworth pointed out that brand owners opposing UK registrations must do all this concisely in accordance with the new practice note TPN 1/2015 which limits you to 300 pages without leave. 

When questioned on the practicality of this for well used marks which were being put to proof of use in face of obvious use, I was informed that such brand owners normally had more recent registrations on which to rely in their oppositions. So it appears that the Appointed People are at one with the registry in condoning the abusive use of refiled registrations to avoid proof of use challenges, and it is only the miserable SME who relies on registration and renewal that is to be mocked by this enforcement burden.

Dissipating Goodwill

There was also a master class by Hazel Carty of Manchester University on the concept of goodwill and whether it could be abandoned or dissipated more slowly. Hopefully once we have the views of the Supreme Court on Starbucks which our chair indicated was likely to review in some depth the Star Industrial case from 1976 (which discussed abandonment (by assignment)), it may be clearer whether it is ever safe to resurrect a zombie mark. Certainly the band cases and the Masylyukov v Diageo case concerning the registration by the appellant of the names of some closed whisky distilleries decided in 2010 by our chair suggest that its a risky option. However the point made Mr Justice Arnold made was that the goodwill was not dissipating in the Masylyukov case but was still being created (even if the whisky was no longer being distilled) as there was stock and it was being sold.

We were also treated to some perspectives from Australia by Robert Burrell who showed that there, an unused mark with dissipating goodwill could remain on the register.

Background Copyright troubles Sally Cooper

From time to time I remember the essay question : “Original research = intelligent plagiarism. Discuss”. Particularly, it comes to mind whenever I come across disparate pieces of information and want to link them. The link in what follows is Sunday (day of the week) and buildings (or rather pictures of buildings) : no claim is made to originality (or intelligence).

On Sunday last (so August 2014) I went to the exhibition at the National Portrait Gallery titled “Virginia Woolf : Art, Life and Vision  A few days earlier I had read the exciting post of Eleonora Rosati on IPKat [ Thursday, 21 August 2014 : Taking a selfie inside the National Gallery: a copyright infringement?  ] which brought the news that “following similar moves by a number of other UK institutions .... the National Gallery in London has changed its strict no-photos-(please) policy”.


Was it the case (I asked myself) that the National Portrait Gallery was one of the “other UK institutions” ? Could I (for example) place myself in front of T.S. Eliot in this photograph and take a selfie of Virginia Woolf leaning towards me (replacing T.S. Eliot)?   Alas, the website of the National Portrait Gallery is clear that

“Photography is not permitted in temporary exhibitions or displays with loans”

So no photograph. But two thoughts :
1) on period of copyright : the line (bottom of the photograph on the website) is (C) National Portrait Gallery London. Lady Ottoline Morrell took the photograph of Eliot and Woolf in 1924. She died in 1938. So copyright expired in 2008 ?

20 on Representation of certain artistic works on public display” : Section 62 Copyright,Designs and Patents Act 1988 ('CDPA') applies to “buildings” and provides that “The copyright in such .... is not infringed by ...... making a photograph ... of it”. The follow-on is that “ Nor is the copyright infringed by the issue to the public of copies, or the communication to the public, of anything whose making was, by virtue of this section, not an infringement of the copyright”. So presumably I can take a photograph of the building that is the National Portrait Gallery and include that photograph in a (greetings) card which I post (online) on social media and post (envelope-with-stamp) to family and friends and others WITHOUT risk of an allegation of copyright infringement ?

On Sunday a couple of years ago (September 2012) I visited Spa in Belgium for the F1 Grand Prix and took a seat in the stand at Eau Rouge (being an “uphill corner” on the circuit). So a chord was struck when Lee Curtis published on the Linked In Group of Automotives+ IP news that “ .... Infiniti have applied to register the trade mark EAU ROUGE in the US for cars, despite the fact the mark has been registered in the EU by the famous race track”

The detail that attracted attention was Lee’s reference to “the UKIPO practice on the registration of the names of famous buildings”. The relevant paragraph in the Manual – headed FAMOUS BUILDINGS (Pictorial representations (emphasis supplied) or names of well known buildings) - contains the text :

“traders in the area of a famous building, which is likely to be a tourist attraction, should be free to produce mementos and ornaments bearing the name or representation (emphasis supplied) of the building without infringing the rights of another."

Also the text :

“if the building is a tourist attraction then the objection should be raised”. 

As to where it leads :
A) If I take a photograph of the building that is the National Portrait Gallery and thereafter distribute this photograph – the law of copyright sanctions this activity : section 62 CDPA 1988 (above)
B) If I take a photograph of the building that is the National Portrait Gallery and try to register this (representation) as a trade mark at the UK Trade Mark Registry, there is likely to be discussion with the Registry as to whether the mark applied for is a famous building / tourist attraction : see Manual / UKIPO practice (above)
C) The interests of the National Portrait Gallery lie in the UK Trade Mark Registry coming to the conclusion that the building that is the National Portrait Gallery is a famous building / tourist attraction so that my attempt to register is refused
D) But such a conclusion means (presumably) that an Application of the National Portrait Gallery to try to register a photograph of the building that is the National Portrait Gallery must also fail.

So (I ask myself) will the public-spirited owners of buildings which have a “Photographic Policy” be amending same with the note “This building is a famous building / tourist attraction” in the hope this deflects / reduces the possibility of a photograph (representation) of that building being registered by a third party as a trade mark ?

Colouring In Trademarks

Its not so long since Sally was blogging about the difficulties of deciding whether or not to colour in her trademark applications after the Specsavers decision which rather led us all to believe that gray scale gave you all the benefits of a reputation garnered by use in green. Nevertheless OHIM has now produced a common communication which has set us all aflutter . It turned up just before Easter/Passover on April 15th and has already been commented on by the IPKat. Now its fairly un-contentious on priority and identity but genuine use is the one that we need to address because there is no point in having something on the register that the client cannot defend. The paper does not deal with infringement because the registration offices don't have that problem and arguably Specsavers says all we need to know on that.

As far as the genuine use of a black and white or grayscale mark is concerned - the actual use has to show

• A change only in colour does not alter the distinctive character of the trade mark, as long as the following requirements are met: a) the word/figurative elements coincide and are the main distinctive elements; b) the contrast of shades is respected; c) colour or combination of colours does not possess distinctive character in itself and; d) colour is not one of the main contributors to the overall distinctiveness of the mark.



a CTM as registered

A trade mark as used

C and D are where life gets exciting especially when you consider the accepted practice that a sign is not one sign but many overlaid one upon another so this SPECSAVERS mark was the word on the figurative shape of the overlapping ovals with added green which was the only element not claimed as a trademark in its own right. So are we OK on the use of this black on white community trademark No  001358589 shown ? as a result of use in green. At this point it seems to me that the community was thinking more about a registration in green being used in pink or a shade alteration. C and D seem to be referring to the mark as registered. If we look at it that way there is no problem in confirming genuine use. However if the shape mark had been registered in a different shade we would have a problem as the sign is so simple that colouring it in on the register immediately suggests that the colour has some distinctive character in itself or at least is one of the main contributors. Therefore it seems to me that NOTHING has changed and the idea of registering in black and white is sound especially if colour is incidental.

However if you are going to register in colour or even grayscale then better get your colours right and replace the registrations if they change. Still it has always been good advice to register your trade mark as it is used and then there are no problems in proving genuine use. However trade mark agents find it irresistible to be able to oppose rather more than the identical mark as used on the basis that it is identical to the partial signs they have registered.

Pause for Thought: Unlawful Trade Mark Examination

It's often the case that, having filed a UK trade mark application, an applicant is in two minds as to

Pondering whether to Proceed with his Trademark

whether it is prudent to allow a notification to go to an owner of an earlier right. Depending on how close the trade mark is or whether the owner of the earlier right is still in business and indeed possibly a close competitor, it might be a good idea to let him know so that the invitation to oppose from the UK IPO (which is what it feels like, even though it isn't) does not come out of the blue. For this reason, the UK IPO have decided that the application should wait for two months before they go ahead with the advertisement. During that time the applicant can respond and push the application ahead straight away -- or he can ponder.

Things aren't quite the same with OHIM. There, they are very competitive and love to be able to advertise that applications are published within hours or, at the very least, days. I think this race to register began with the dot-com boom and the need to have a trade mark to get into the sunrise period for new top-level domains. Such joys have now passed. Efficiency is good -- but should it be in disregard of the law? In the summer, the IPKat drew attention to the fact that OHIM are regularly publishing applications less than a month after they have sent out the search report. This contravenes Article 38(7) of the Community Trade Mark Regulation (CTMR), which was designed to give applicants an opportunity to ponder their search results by delaying the publication for a month from delivery of the search report.

One of the improvements OHIM have offered in their new website (see post below) is an opportunity to do a search at the point of filing, so you can decide whether to pay your fee. This looks very promising -- though I haven't had an opportunity to try it (being small and not impacted by new websites (sob!)). So I asked the OHIM team whether they were going to continue ignoring Article 38(7). The question was well understood -- but it wasn't answered.

Efficiency! Speed! Those are the objectives, and they can be measured. No doubt the revision of the CTMR, if and when it happens, can be made to remove this embarrassing provision. However, it hasn't happened -- and it doesn't bode well for the rule of law if European institutions are able to boast about disregarding burdensome provisions while asking the CJEU in great ceremony to interpret others less inconvenient.

Many professional trade mark attorneys use a deposit account. The rules of deposit accounts require the the fee is not deducted until one month after the filing date. This fits nicely with the anticipated delay before publication, and these applications don't seem to be fast-tracked as they can withdraw during this period of grace and recover their Euro. However, it seems that the credit card users pay their money straight away so their applications are advertised faster. In many cases, it may be the credit card users who are best advised to ponder.

I don't like to criticise OHIM. Mostly speed is good but maybe the Oppositions and Appeals process could get the benefit of acceleration while the applications comply with the law.

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

Add caption

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?

How to Protect Consumers and Regulation - Titles and the Unregulated

Having read the various comments in response to the post The Great Unregulated (why so many anonymous?) I think the issue is not whether there are regulated firms that provide poor value, or unregulated ones that are excellent, so much as whether the area of advice is important enough for society to ring fence in some way to protect consumers. For example, nobody would dispute that only doctors should be let loose on the public to provide certain types of services. So, that is the question, what types of legal services should be reserved activities that only lawyers, patent attorneys, trade mark attorneys, or whatever other discipline is permitted to provide?

Consumer protection?

If the aim of the Legal Services Act is in part, consumer protection, then these sort of questions need to be considered. Fine distinctions between trade mark attorney, and registered trade mark attorney, or trade mark agent, are not going to be easy for the public to understand. The question is, should the public be protected against the clerical assistant who worked for a short stint in a law firm, and who then sets himself up in business as a trade mark agent because they can’t find any other work? Their knowledge may be miniscule, but it will be greater than that of the lay public, so they may well be able to attract work if they price themselves cheaply enough. Does society think that trade mark registration is important enough to become a reserved activity? What about web design, search engine optimisation, marketing and many other areas where anyone can set up in business…. with little experience, and pick up the ropes as they go?

The Unregulated

What is unhelpful in my opinion is the rivalry between professional bodies, and all the protected titles that are devised in order to mark out a particular group as the ones who should be consulted above all others for that particular area of work. Surely, other regulated entities are not the real problem. If the people who should not be allowed to mislead the public by use of titles are the unregulated sector, (possibly those people with little background in law, who may be passing themselves off as suitable to provide legal services), then let's find solutions to stop some of their unregulated activities.

If we thought trade mark registration work should be a reserved activity, then it might be relatively easy to prevent certain people filing trade marks as agents for others. They might still find a role providing help to the public to draft their own applications, but at least their limited capacity to act would mark them out as a different type of trade mark agent. But in the absence of some radical measure like this to distinguish between providers, what is the point of reserving use of titles, if there would be some other title that the unregulated would be able to use in order to provide their desired service?

Protecting Titles

In the meantime, we are in the ridiculous situation where confusion reigns over who may or may not call themselves trade mark attorneys. For example, recently, after verifying on this post that there appeared to be an error in the IPO’s booklet Choosing the Right IP Adviser I wrote to the IPO to point out that solicitors could also call themselves trade mark attorneys and could they please correct the error. To my astonishment this week I received the following reply from ‘Debbie’ of the iPO:

Thank you very much for your feedback on the 'Choosing the Right IP Adviser' booklet which has been forwarded to me from Paolo Senese. Please accept my apologies for the delay in response but I have been absent due to a bereavement.

I can confirm that the point you have raised re: page 7 about Trade Mark Attorneys is being looked at. This issue has also been raised by another Attorney.

The text in the booklet was taken from the CIPA website relating to Trade Mark Attorneys and cleared internally by TM colleagues, but as you rightly state this does not tie in with Section 84 of the Trade Marks Act 1984. Thus, "trade mark agent" and "trade mark attorney" remain open for anyone to use.

I have been discussing with CIPA and I understand that the Protected Titles Committee recently considered the matter and was making a report to Council on 5th January in which it is suggested that the public would be misled now by anyone using the term if they are not on the Register of Trade Mark Attorneys. The reason for this is that the treatment of trade mark attorney is now in all other respects analogous with the treatment of patent attorney and with the "Register of Trade Mark Attorneys" now in place the public is likely to assume that someone using the title is entered on the Register. Thus the Committee is proposing that Council should issue guidance to Fellows that they should not use the title unless they are also entered on the Register. Whether that will be accepted by Council I do not know and am trying to establish the outcome of the report with CIPA.

CIPA has confirmed that they will not be updating their website until the outcome is known with the view that I would amend the publication at that time.

I will be more than happy to provide you with an update when I hear anything further from CIPA.

Thank you for your interest in the IPO publications and if you have any further feedback in due course this would be most welcome.

I was amazed that the IPO seem to think that CIPA have the right to make changes except possibly with regard to their own members. If CIPA wish to issue guidance to Fellows that they should not use the title Trade Mark Attorney unless they are also entered on the Register, I doubt this would have effect on anybody else’s use of this term. It's also surprising that the CIPA website has this statement about the term Trade Mark Attorneys. What happened to consultations with other interested parties?

While I agree with CIPA that all these terms are confusingly similar, I do object as a solicitor, to them effectively trying to deprive solicitors of the use of the title. It speaks volumes about the problems that need to be addressed. I read recently that there is a realisation that greater consideration is needed as to the activities that should be reserved and what Alternative Business Structures (ABS) will be able to provide once legal services are deregulated. Otherwise, consumers are in danger of being misled.

While Jeremy’s suggestion that some further research is needed in this area is correct, it clearly needs to focus on both regulated and unregulated IP providers.

Early Assist for Trademark Applicants

I have been working on a personal response to the UK IPO consultation on credit crunch fee structures which is due in before 1 June 2009. To download the consultation paper go to http://www.ipo.gov.uk/pro-policy/consult/consult-live/consult-feeservices.htm

The overriding objective of the consultation is that businesses should protect their trademarks and inventions. It is also clear that the IPO feel some responsibility to the significant proportion of unrepresented applicants. These may represent a larger proportion of applications abandoned before advertisement and they were certainly a category Gowers cared about. Of course we must point out that there are some very cost-effective qualified trademark professionals available for hire amongst the SOLO group. If you need or want to offer help post a comment.

Amongst the proposals are a new Early Assist program, abolition or suspension of the Fast Track and encouragement for e-filing. The Early assist program appears to replace the recently abolished Search and Advisory Service and would let businesses get help and refunds of some of their fees if they wanted to represent themselves.

If I were an entrepreneur starting a business today with next to no cash, I would not spend what I had on a trademark attorney. I would try the DIY route. I might not bother to protect my mark at all. If I were starting a stay-small business it is not much of a priority, but let's suppose I want to grow my business then protecting the brand is on the agenda and a UK trademark is a good place to start. For such a one, is this Early Assist program the best solution? Can we improve it? I think we can. I think it could be better offered as IP Aid by selected quality approved private practitioners rather than through the IPO. Some of the more innovative filing services such as Trademark Direct are already offering a No TM No fee guarantee. Our entrepreneur does not want to waste his limited cash. In the beginning it is easier to change a name than fight a war.

Therefore I think this idea needs encouragement and I am hoping we can think of ways that would make it work better and ensure that the trademarks registered with such assistance are not just in compliance with the Act and rules, but the right protection for the business as well.

UK Trade Mark Rule Changes

Its back to school for UK trade mark agents to get to grips with the new Rules we will have to work to from 1 October 2008. As discussed earlier in this blog the UK IPO consulted about these housekeeping matters so there are no real surprises. The SOLO approved (we had two comments so that was a big vote of confidence) shortening of the opposition period comes in at two months- extendible for another month. A nice compromise making the fast track that little bit faster.

Non-use actions that succeed because the trade mark owner has moved away from his noted address become that bit more difficult as there is a new Rule 43 that allows decisions to be set aside if the proprietor did not recieve the documents. Lots of discretion and the registrar has to be reasonably satisfied that the form did not arrive not just that it was binned. The rule applies to abandoned applications and oppositions as well.

Of course all our carefully learned numbers change as well. Extensions of time are now Rule 77 and are tinkered with once again. Late extension requests are now limited to two months. This, they say, is to comply with the Singapore Trademark Law Treaty. The "discretionary" standards for extension now only apply to the time limits set out in Schedule 1. These now include the opposition period. Fighting about extensions for evidence now seems to be futile as the rigistrar can do what he likes whatever the other party says, though they do still get a copy. Lets hope the registrar wants to keep proceedings moving otherwise we could be back to evidence at the convenience of the filing party.

We can forget having to file priority documents too. See new Rule 6. This brings the UK into line with OHIM. Sadly the transitional provision means that we still have to file a priority document for cases filed before 1 October 2008.

Perhaps the Registry will be planning workshops to introduce the rule changes. I think it would be nice to have a SOLO one

Statements of Use at UK IPO

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.

Why has the IPO changed its practice re online filing?

I too am still struggling post INTA and LA networking trip from which have just returned.

As life is so busy it is not always possible to get to grips with all the details one needs to know. So, it would be extremely useful if somebody who is familiar with the reasons behind one recent IPO change of practice which is puzzling me but which I don't have the time to look into would either please post a blog item on it or comment on this blog. The change in question is that it is no longer possible to file an application online unless one pays for it straight away. Previously, we used to file the application, wait till its details were posted online, check that it was correct, and then send in a cheque to complete the application. If for some reason we needed to abandon the application we did so without incurring a charge. This worked extremely well for me as I left junior staff to file the desired application but could check it later before making payment. Now, according to my junior staff, it is necessary to submit the paper form if we wish to have this same flexibility of abandoning the application should we want to. Is this the only way? Is it really necessary for us to print out and post the application form? We are a paperless office and given that the IPO seems to also want to cut down on paper, it seems nonsensical for them to have introduced changes which increase the volume of paper they will generate. Can anyone shed light on the reasons behind this change of practice, and indeed whether there is another way to achieve the possibility of abandoning an application if necessary?