Monday 7 September 2009

Must we oppose?

Before investing a client's money on an opposition fee, and mindful of the Trade Mark registry's guidance, I wrote (by fax and post) a while ago to the agents for the application in which my client was interested. Knowing how trade mark agents like deadlines, I asked for a reply by a certain date. When that date passed without a reply I wrote again and asked at least for an acknowledgement, and when that went unanswered too I telephoned.

I spoke to a member of the firm's staff, who told me that because so often a letter-before-opposition was a "try-on", as he put it, it was the firm's practice to ignore them. If a Notice of Opposition then arrived, they would seek an amicable settlement, which he assured me was common practice. I pointed out that this was not an approach conducive to amicable relations, and told him I would refer the matter to the Institute - which I have done. I know that it is not universal practice, because others have acknowledged such letters.

ITMA's Code of Practice deals in section 2 with "relations between members of the Institute". This states in pertinent part: "A Member must behave courteously at all times, irrespective of the issues involved in the matter with which he is dealing". It does not deal with relations between members and other professionals. It seems to me that failing to answer correspondence is about as discourteous as can be (not that I have never failed in timely fashion to acknowledge a letter, but not as a result of a deliberate policy). It also seems to me that obliging the would-be opponent to become an opponent in fact creates an unnecessary cost burden for the opponent and for the applicant, as well as making an amicable settlement unlikely. If my opposition can be settled, it will have to be on terms that include payment of my client's wasted costs, and if that means taking it to a formal decision and costs award then so be it.

What possible purpose does the agent's policy serve? If there is a problem with "try-ons", the same paragraph in the Code surely applies - surely that in itself shows a lack of courtesy.


  1. I feel your pain though this firm seem to be saying that silence is in the best interests of their client. What do other think? Surely a solicitor would be obliged to pass on the notice but could suggest that no response was a prudent course. Acknowledgement is always sensible as without that your docket is likely to cause you to follow up before the opposition deadline.

    The IPreg Code rule 9 (b) would entitle you to serve the client after due warning.

  2. The registry's rules say that a Notice of Opposition is also a suitable initial way to intimate an intention to oppose, I think - but I think a little heavy-handed.

  3. Yes I agree Barbara. I would acknowledge receipt and say that we will revert once we receive the client's instructions. I can't see that any great advantage is gained by not letting the other side have proof of service. Thereafter if the client doesn't want any action to be taken that's fair enough and is our prerogative not to respond in substance.

  4. Just to put a different point of view...

    Your point of view suggests a particular relationship between professionals. If I received a letter from a UK trade mark agent or solicitor I would probably reply. But potentially litigious communications from outside the UK? I am not so sure. Clients have been on the receiving end of speculative, scatter-gun letters from US patent lawyers, where the best course of action has been to ignore them. I get emails from people I have never heard of and that I don't wish to reply to, which go in my "nuisance emails" archive. Perhaps your (non)correspondents were being a little too sweeping in their non-reply policy, but I think I can see their point.