Associations and marks: which is the best approach?

This blogpost has been composed by Sally Cooper, but is posted on her behalf by Jeremy

NewAssociation Limited (“NA”) provides a logo and explains its business plan which involves both (i) NA engaging in the manufacture and sale of (a variety of) goods to which the logo is attached and (ii) NA engaging in licensing to (carefully selected) others who want to use the logo.

NA has great faith in the attraction of its logo and experience in selling low-price merchandise (so T-shirts, mugs, keyrings etc). NA has no experience of selling luxury goods but (back to the power or attraction) great faith that it can find established businesses prepared to pay to use its logo. There may even be a time (says NA) when it can stop its own activity of manufacture and sale and rejoice in being an

Association devoted to allowing others to use its logo.   

I like the logo. I am sympathetic. And I need time to think.

That is, to think about “collective marks” which are marks “distinguishing the goods or services of members of [an] association [which is the proprietor of the mark] from those of other undertakings” [section 49 Trade Marks Act 1994].

I see that the UK Trade Mark Registry’s Manual of Trade Marks [Chapter 4] sets out what I learned at Law School: viz:  

“ [Certification and] collective marks differ from “ordinary” trade marks because an ordinary trade mark is one that distinguishes the goods and services of one particular trader (a single trade source) from those of other traders”.

 I am pleased that the Manual sorts out a fuzzy memory: certification marks (used to indicate that the goods in connection with which the mark is used are certified in respect of origin etc) are (says the Manual) “not used by the proprietor of the mark”: however “not used by the proprietor of the mark” isn’t a consideration in the context of collective marks.

I remind myself of NA’s long-term aspiration of being an Association devoted to allowing others to use its logo.

Do I recommend only filing an Application for an “ordinary” trade mark ? Or do I set off into the (largely unknown) territory of an Application for a collective mark ?

Fortunately (grateful thanks to IPKAT) I then read the decision of His Honour Judge Hacon in The National Guild of Removers and Storers Ltd v Derek Milner t/a Intransit Removals and Storage [IPEC: 18 March 2014, IPKat here].

From its final paragraphs, I learn two things. 

First, I see that the claimant in the case shared similar uncertainties. The judgment sets out that before filing an Application “[the claimant] professed no expertise whatever in the law of trade marks and said that [ it] was entirely guided by the IPO" / “ [the claimant] must have discussed the alternative possibilities of applying for a collective mark or a trade mark, but in any event [ it] would have gone with whatever [ the IPO] advised [ regardless of fees] “. The outcome of discussion with the IPO was that the claimant became the proprietor of an “ordinary” trade mark rather than a collective mark.

Secondly, I learn the opinion of the Judge that, since the Trade Marks Act 1994 was drafted and enacted , “the view on how a trade mark may be used has been updated and has altered”; indeed it has been updated and altered to the extent that His Honour says 

“I find it hard to think of a circumstance in which an association entitled to apply for a collective mark could not avoid the cost and inconvenience of those provisions [ section 49 Trade Marks Act 1994 / Schedule 1], and indeed evade the safeguards to the public they afford, by applying instead for a trade mark".

 I shall recommend an Application for an “ordinary” trade mark: if you disagree – there’s the Comment box!

Sole practitioner Simon gains accolade

The SOLO IP weblog congratulates Simon Thorley QC on his recent award for Outstanding Achievement at Managing Intellectual Property magazine's Global Awards 2014 ceremony last week in the luxurious surroundings of London's Dorchester. This blogger was out of town at the time and missed all the fun -- but he understands that Simon graciously described himself as a "sole practitioner" -- which indeed he is.

You can check out all the awards here.

Of proof and professional duty: a thought

A recent post by this blogger on the PatLit patent litigation blog touched on two delicate topics: one is professional negligence, the other the extent to which a patent attorney who is accused of professional negligence can secure the documentary evidence that reflects on such relevant issues as (i) the precise scope of his professional duties, (ii) whether he has fulfilled those duties to the requisite standard or as failed to do so and (iii) whether his former client's loss is the result of any breach of those duties or is caused by some other factor.

In an ideal world, the terms on which any professional representative acts for a client will be contained in a document in which those terms are clearly stated, easy to comprehend, spelled out to the client and happily agreed. But we do not live in an ideal world. Even if such a document is drafted and the terms of engagement are as described in the previous sentence, the relationship of client to professional representative does not always remain static: as work progresses and the file grows fatter, the professional may find that he is, at different times, a technician, an amanuensis, a business adviser, a financial consultant, a marketing guru, a maker of vital personal connections with others, a confidante and a nanny too. Any original terms of engagement may well have been long overtaken by events -- with the result that the real relationship between client and professional representative may only be truly capable of being extracted from a myriad of emails, memos of meetings and other materials that are tedious to gain disclosure for and even more tedious to wade through.

Is there an easier solution, or an ideal one?

Sally Cooper reaches for her colouring book

NewClient Limited (“NC”) provides a new logo which involves a creative intertwining of the letters “N” and “C” imposed on a fictional flower. I see the flower as a combination of a buttercup (the head) and a rose (the stem). To hide my horticultural ignorance, I comment on the fact that four logos are provided – a first in orange, a second in green, a third in blue and a fourth in red. 

I am told that the new logo has been created in-house by NC’s (employed) design team and the

concept involves use of a different colour in the context of each different business activity. I am also told that NC will operate only in the UK in the near future, and all business is “sporting and cultural”.

The copyright symbol – (c) copyright NewClient Limited 2014 – is attached to materials provided

(none of which have yet been released to the public), and the budget for doing anything further is (very) limited.

I am asked about “Trade Mark Registration” and “DesignRegistration” which NC has read about on the website of the Intellectual Property office at www.ipo.gov.uk.

Particularly, I am asked about registration and colour : I do my best. Key parts of the letter I draft for sending to NC are as follows :

DRAFT BEGINS :

Dear NC

Amongst the issues under discussion are (1) the costs of filing either a Trade Mark Application or a Design Application, and (2) rights arising to the owner of a Trade Mark Registration (under the Trade Marks Act 1994) or to the owner of a Design Registration (under the Registered Designs Act 1949 (as amended). In turn :

1) Application Costs :

 a) Trade Mark Application :

    In order to concentrate on issues of colour, assumptions made are (a) that the Application will be for services in a single Class (viz: Class 41) and (b) that payment of official fees with not be made at time of filing (so no discount of £ 30).    The UK Trade Marks Registry will accept a series of two marks for its basic fee of £ 200.    So NC could apply for its new logo without colour (version in “black-and-white”) and, for that same basic fee of £ 200, add (say) the logo in orange as a second mark.    If NC takes the view that this gives undue importance to the logo in orange, it becomes relevant that the Registry requires an official fee of £ 50 for each additional mark in a series.
    To take account of its view, NC might apply either (a)  for one mark being  the new logo without colour (version in “black-and-white”) (basic fee of £ 200), or (b) for a series of five marks (logos in “black-and-white” / orange / green / blue / red) which attracts an additional official fee of  £ 150
(so £ 350 in total).

b) Design Application :

 The UK Designs Registry will accept two-dimensional designs (“Business logos”) in Class 99 (“Miscellaneous”). It has a basic fee of £ 60 for a first design, and £ 40 for each design thereafter. 

Hence, NC might apply only for its logo without colour (“monochrome”) for the basic fee of £ 60, or it might file for five logos (“monochrome” / orange / green / blue / red) at a total cost in official fees of £220. [ An assumption is made in the case of all fees that publication will not be delayed ].

2) Rights arising  : 

a) Trade Marks Act 1994

“The relevance of colour to a mark registered in black-and-white but used extensively in a particular colour or colours” is the title of a recent Notice issued by the Trade Marks Registry [ TPN 1/2014 ].

The background is a case decided by the Court of Justice of the European Union [ CJEU ] which concerned a mark which had been registered only in black-and-white, but which had, in fact been used extensively in colour  [ Case C-252/12 Specsavers  International Healthcase and Others v AsdaStores Limited ].

The Registry’s Notice brings good news that “use of colour may be taken into account as a relevant factor when considering the likelihood of confusion, detriment or unfair advantage being taken of the registered black-and-white mark” [ paragraph 3 ]

But the Registry also gives a warning : “the CJEU’s judgment does NOT (and NOT  is emphasised by the Registry) mean that colour should be taken into account where the [the owner’s registered trade mark ] has been registered in black-and-white but either (i) has not been used, or (ii) has been used in colour(s) but the extent and consistency of such use is not such that the colour(s) formed part of the distinctive character of [ the owner’s registered trade mark ] .... In these circumstances, colour will be regarded as irrelevant”.

b) Registered Design Rights 1949 (as amended)

The Court of Appeal in the United Kingdom gave its judgement in the case of Magnetic Ltd v PMS International Ltd on 28th February 2014

The Court looked at the record of a three-dimensional article where representations on file did not include any colour and (Lord Justice Kitchin) said “it is striking that the various representations are shown in monochrome, and so it must be concluded that this design is not limited to particular colours”  [ paragraph 42 ] (this time, the emphasis added is mine).

DRAFT ENDS

I have put this draft letter to one side whilst I ponder the question : is it really the case that black-and-white / monochrome logos on the Designs Register now enjoy broader protection than black-and-white / monochrome logos on the Trade Marks Register ?

Answers to the Comment box !

Strikes are in the air -- but not for us

"Unrest at the EPO -- strikes are in the air" is the title of blog-of-the-week from the IPKat's enthusiastic companion Merpel. At the time of composing this piece, Merpel's post has been viewed by thousands of readers and has received getting on for 60 readers' comments. Many express a large degree of whatever the absence of sympathy is for the European Patent Office employees who are intent upon industrial (in)action.

Some sectors of the IP community do not strike, the most obvious of which is the band of self-employed and small-scale IP private practitioners. With no employer (or no large, well-endowed and well-resourced employer) to whom one can make one's demands and/or threaten to withhold one's labour, solos and their colleagues just have to get on with their work as best they can. The reality is that they can't withhold their labour even when they're not working. How many times have holidays, family outings, precious leisure breaks and moments of intimacy been shattered by the intrusion of a client's call? How many times has the recipient of such a call made a swift calculation as to whether it's better (i) to tell the client to get lost or call back later or (ii) meekly pretend that he's been looking forward to the call all along?

The truth, it seems, is that medical practitioners, religious and spiritual leaders, parents of small children and solo IP practitioners are truly never off duty and have no chance, rightly or wrongly, to withhold their labour ...

European Union Trade Mark Reform (where CTM becomes EUTM and OHIM becomes the Agency)

Cecilia Wikström

There was not much broken in the Community Trademark System (other than the usability of its website) and it is now so so long (2011) since the Max Planck Institute produced its study that most practitioners have rather lost the highly convoluted thread of its progress. In a press release from the European Parliament  we were informed the issue would be debated on 24 February 2014. The next day we were informed by the Swedish priest who is also an MEP that they had completed their report. It now goes to the Council and then we get to use it. Meanwhile do ask your local candidate for the European Elections on 22 May  for their opinion.

Anyways the current state of play is shown by these documents on the Directive  and the Amended Regulation  . If you want to see the full text before the Parliamentary changes it is simplest to consider the 20 February 2014 compromise position documents  which are conveniently made available by the UK IPO here


Its now plotted as a European UNION Trade Mark and OHIM is to be a European Union Intellectual Property Agency (patents are not that important and anyways maybe OHIM can take over the Unified Patent functions of the EPO).

The proposal as it currently stands suggests (Amendment 29)  that you cannot enforce your registration against  use that "is made for the purposes of parody, artistic expression, criticism or comment".  Our Community European Union Trade Mark Judges may have a sense of humour failure over that one once we have been to the European Court and back. 

The OHIM representative speaking at the McCarthy Institute event at the British Library on Thursday March 13 seemed pretty happy with where they were going so one imagines they have control over the editorial process. 

Call to Arms for UK Patent Litigators

If you are European Patent Attorney and hope to practice in the future before the Unified Patent Court, now

is the time to make sure that your qualifications will allow you to be entered on the list of representatives.

There is currently circulating covertly, a draft proposal for rules on the European Patent Litigation Certificate and other appropriate qualifications. As presently drafted any European Patent Attorney who has an LLM or a law degree will have the right to go on the list. I approve. Sadly my CPE didn't get me a degree, so I need to try and persuade Laura Starrs at the UK IPO and her team to suggest some appropriate changes. If you think you may be in a similar position get in touch with your professional body CIPA where Vicki Salmon is working on their submissions or the IPO directly.

Many Chartered Patent Agents are much miffed that other European countries do not recognise that we are lawyers. We have to accept that that battle was lost when the Court of Justice of the European Union decided only solicitors and barristers were lawyers from the UK and that was some time back when OHIM appeals became significant business. The UK government has not helped in all that time and I don't expect them too now.

Trademark Law in China Update from Sally Cooper via Leeds to HK

May Day happens each year on 1st May and (per Wikipedia) is “an ancient Northern Hemisphere spring festival.” Leeds is a city with a number of road markings that read “XING AHEAD”.

Here is duck xing sign

I was not expecting the two to come together as I travelled today to the Leeds office of Walker Morris – but they did.

The XING connection is that it “looks Chinese” whereas the real thing is Tingxi Huo of CHOFN (website at www.chofn.com) who delivered a number of formidable thoughts on Trademarks In China.

And 1st May is what we Brits call a “commencement date” : there will be new trade mark rules in place in China just before INTA gathers in Hong Kong in May 2014 !

This small report concerns only four matters that were of particular interest :

1) Translation : Our speaker explained that translation into Chinese characters might be (a) conceptual – so the translation of APPLE (the business) equates to “apple” the fruit, or (b) phonetic – and ADIDAS was given as an example of this, or (c) mixed – so (it seems) STARBUCK combines the characters for STAR (concept)and BUCKS (phonetic). And you can change ! It appears that LEXUS until June 2004 relied on a “conceptual” name – but when Chinese people (even English-speaking Chinese people returning from long-term visits to Europe) failed to link the LEXUS brand with its “conceptual” name in Chinese characters – the company changed to LEXUS in “phonetic” characters. Additional to this were (a) comment on “non-official” names or “nicknames” being used by Chinese-speakers (and the desirability of the brand-owner registering these names as trade marks), and (b) the importance of translating into Chinese characters in relation to goods-for-sale not only the brand-name but also supporting materials (such as labels and manuals).

2) The ® symbol : In China, this means “Registered in China” and Chinese Customs Officers police both incoming and outgoing infringement (emphasis supplied). In consequence : (a) if you intend to export goods from (say) the UK to China (and you have a trade mark registered in the UK or EU so it’s your practice to attach the ® symbol) then remove (or change to TM) so as not to attract the attention of Customs when goods arrive at port-of-entry in China, and (b) if you intend to have goods manufactured in China but don’t have a trade mark registered in China for those goods, then wise counsel is to search (the Register in China) before going ahead with an order for manufacture (and, in any event, be sure not to attach ® to such goods manufactured in China !)

3) Time limits : China became a Member of the World Trade Organisation in 2001 and 1st May 2014 is the date when time limits come into force for dealing with Trade Mark Applications (and for appeals). For example, there will be a time limit of 9 months for dealing with a new Application and a time limit of 12 months for dealing with an Opposition. For the first of these – our speaker made reference to the International system – filing locally in China will attract the 9-month time limit whereas the International system brings with it a time limit of 18 months. For the second of these – “special circumstances” will justify an extension of 6 months (so we wait to see what “special circumstances” will justify dealing with an Opposition in 18 months rather than 12 months).

4) (State) Administration For Industry And Commerce : this entity has 500,000 employees and it has teeth ! If presented with “clear-cut evidence” it will act quickly and effectively. It will not provide a brand-owner with damages, but it will initiate investigates / issue orders to cease infringement / confiscate (and destroy) infringing goods and tools / impose (significant) fines.

I travelled away from Leeds and Walker Morris and Tingxi Huo grateful that I’d learned something of the “similarities” between our systems in the UK / EU and those that will be in place in China after 1st May 2014. Now for INTA !