Sunday 28 February 2010

Clutter on the Community Trademark Register

Clutter of a different sort
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.


  1. I would suggest the client applies to register a trade mark, and then see if the existing registrant objects. If they don't object, then at least they will secure a registration and brand ownership rights which, with the passage of time, will no longer be capable of being invalidated.

    There is no other way of knowing whether the trademark owner is actually using its broad trade mark. So applying to register seems a more positive, and potentially cheaper, way of approaching the issue than applying to cancel a mark.

    I find that even when the registers are not cluttered, it is impossible to assure a client that a trade mark owner will not take objection to their application. That's because some trade mark owners take a wildly expansive view of their registrations, while others take a more modest view of the area they want to ring fence.

    You only find out which type of trade mark owner you're up against when and if you begin to use a mark or apply to register it. At least if the new user of a mark applies to register it, they will not have the risk of infringement proceedings hanging over them for ever...

    So, in my view whether or not the registers are cluttered, trade mark applicants always face the inherent risk that they will come up against trade mark owners who take a very expansive view of the scope of protection their marks give them. It is little consolation then, even if the applicant has right its side, because they will incur costs and delay before knowing for sure whether they can use a mark.

    The problem is less about the cluttered registers than that the nature of the rights trade marks give are so subjective and insufficiently clear cut. But if there was an easy answer to this problem, then someone would have found it by now I guess.

  2. Hi Shireen
    Indeed this is the way we live with the exisitng law but the European Commission is now considering changes to the law that could make the system more effective for all business and, in passing, for us as advisors.
    We could, for example, look to the US who seem to have found what you call an *easy answer* by requiring actual use, precise specifications and proof of use every five years and have a far less cluttered register