Clutter on the Community Trademark Register

On Friday I attended the excellent ECTA round table event in London to discuss and contribute to the Max Planck survey on the European Commission Study on the European Trademark System. The OHIM delegation published their contribution to the survey on January 13th 2010.

OHIM say that cluttering of the register is not a problem. They say there is no evidence. They say we are not filing cancellation actions to clear the clutter. They are right. We are not.

Cluttering is a problem both to business in Europe and to the legal system and those of us who work in it as advisors.

A prudent business man should clear a new brand before he starts to use it. Many do.  Part of my workload is to carry out such clearance searches. I have a very small business but these cluttering registrations cause me problems every time I do a search. I have evidence. If I publish it I breach the obligation of confidence I owe to my clients.

Suppose I discover that a proposed brand infringes an existing registration. I advise the client of this. I suggest he might file a cancellation action. If he does he risks drawing attention to a cause of action unless he is prepared to wait for OHIM to complete the cancellation process. Business does not move that slow. Therefore no cancellation action is filed and risks are taken.  If the risk comes off and likely it will, then that business man starts to lose respect for the value of my legal advice. I can only say that if the owner of the cluttering mark decides to take action there is strong prospect that infringement will be found.

There are cluttering marks that are unused and there are those that are covetous and may be used for a fraction of the specification.  We have some very robust European judgements - notably that in Silberquelle C-495/07 - that recognise that covetous marks will not be enforced. Geoffrey Hobbs also waxed lyrical about relying on novel legal doctrines about abuse of legal rights to deal with these covetous registrations. I have noticed that my business clients get quite distracted when I try to explain such wondrous defences. It makes them nervous. They like to know if their defences are sure and certain.

We can understand that OHIM does not want the additional workload of investigating intention to use claims or examining evidence of use on renewal. Nevertheless it is not correct to deny the problem and the debate about possible solutions. If we do not address this the European business world will show increasing disrespect for registered trademarks. They will cease to search and take risks instead. The courts will find themselves with an increasing workload as it will become increasingly difficult to avoid commercial conflicts before they arise. In short, the best place to search for conflict will be on Google - perhaps it already is.

FREE internet business model

My last blog post on the future of small IP firms elicited a few comments about whether or not it is a good idea to provide FREE offerings. Mark Bower linked us to his article on the question of how solicitors and law firms should compete with the availability of free legal information on the web.

The Facebooks, Googles and Twitters of this world may well be able to provide a solution first, and then work out how to make money from it, but can lawyers emulate such a business model? Remember that the very essence of what we as lawyers sell is information itself!

Well for the reasons explained on my blog here I decided to make the new style contract template product we had developed on SEO contracts available for free.

One of the main benefits of making our SEO Contract in Context available for free to a wider audience is what we will learn from feedback. This will help us to improve and enhance both this free SEO product (which is already being revised for an upgrade for release before 23 March) and the other products that are in the pipeline. So if any readers of this blog have any thoughts or comments, they will be gratefully received. You can either leave them here, or on our blog, or send them in on the feedback form of the product page.

The future of small IP firms

Having just posted a blog on the Legal Services Act 2007 - specifically, the changes that a deregulated legal industry might bring about for our law practices, I remembered that Richard Susskind, at a recent interview which was broadcast at the Computers & Law conference last year, predicted a rosy future for small specialist law firms. In his view clients perceive value in expertise, and are happy to pay for it, but see less benefit in the work done for them at more junior levels which tend to be at expensive hourly charge rates.

If anyone knows the interview I am referring to, or knows more about Richard Susskind’s thoughts on this or, indeed, has their own views on this, I would love to hear your comments.

Azrights is focused on innovation, in that if there is one sector of the legal market I would like to better satisfy it is what Richard Susskind describes as the “latent market”. Finding cost effective solutions appeals because the latent market is by far the largest market, and not one that is overcrowded, in terms of law firms chasing after it.

Reducing reliance on one to one consultancy model.

One very simple way we are reducing reliance on the one to one consultancy model is by developing products. We produced one on SEO recently, and are following with two more next month: one on commissioning a website, and the other on website compliance.

Unlike the businesses selling contract templates we aim to also educate about the surrounding commercial context. So our products give extensive video tutorial explanations about the pitfalls and issues to be aware of before engaging given services. We also provide a general interest explanation about contracts in general, as well as talking about the particular contract template that is the subject of the product. We cover key issues such as how it is not necessary to sign a document to be bound in contract, what happens if you think you are agreeing terms when in law your contract is already formed, the purpose of contracts, when long legalistic contract templates may be appropriate and when they are not, how one sided contracts are based on the assumption that the parties will negotiate the terms, which may be inappropriate for small businesses who expect to just sign the document that is placed before them, etc etc.

Use of multi media

Another way in which we are innovating, is through use of multimedia to service our existing clients. For example, during trade mark registration, we often find that despite explaining legal principles in simple plain English letters, some of our trade mark clients either do not read the letters closely enough, or for some other reason do not grasp key issues about the law and procedure.

When time is money, the need to re-explain points to lots of different people, becomes expensive. But on the other hand, clients who purchase a fixed price trade mark registration service might take a dim view if we were to try charging them for extra time just to have something explained to them so they can provide further instructions, such as about how many classes they will proceed with, for example.
So, for us, it was a logical step to deliver some of our explanations by video and podcast. This works because it takes far less time to produce one podcast or video than to explain something ten, twenty or more times – or worse still, have confused clients who do not really feel they received an adequate explanation.

As people differ, it stands to reason that some will be more receptive to receiving information through the spoken word than through the written form. So, a fairly easy change in fact revolutionises legal services, because it reduces the need for one to one consultancy time, while delivering more value to the client.

I would love to hear what others think about the issues I have raised here, and on my own blog, and how they are responding to the future.

Trainees and IP practice

I'm currently speaking to around five to six people a month who are bright, literate self-starters with a good education and linguistic skills and who aspire to qualify as IP solicitors or trade mark attorneys but who often can't even get an interview, let alone a training contract.

If any readers of this weblog are happy for me to forward the occasional CV to them with a view to a possible training arrangement, can they please email me here