SOLO practitioners meet the IPO

BIS HQ 1 Victoria Street

Save the date Wednesday 9 April from 3 to 17:30. This is your opportunity as a small customer of the IPO to get to know their plans and provide some feedback. Its bound to be educational and so IPREG CPD and a good opportunity to meet together with others in a similar situation.

Its being held at BIS HQ and to reserve your place you only need to email with your name, firm and indication of interests by 26^th March 2014.

I have said I am interested in  the opinions service and how the new post IP Bill improvements are expected to work as well as the Trademark opposition process.  These are the topics that might come up if you suggest them

• Patent Prosecution Highway
• Opinions service and mediation
• Update and questions on the Unitary Patent and Court
• Update and questions on the IP Bill 
• IPO Electronic Services - recent and forthcoming changes to IPO services 
• Service issues you are currently experiencing and your suggestions for service improvement 
• Search and examination targets and practice 
• Excluded matter - e.g. Computer programs 
• Bio-technology 
• Accelerated services  (you must have noticed the new .gov format consultation on going two track again on trade marks)
• Colour drawings 
• Section 20 compliance period 
• Electronic citations 
• Excessive claims
• Patent Box
• Guidance for small firms and obtaining finance 

I look forward to seeing you there. Even if you only do patents or trademarks and not both it makes sense to come and pick up a few contacts for your cast offs.

This is part of the customer visit programme run by the UK IPO . There is a full report of how they got on last year here

Suggestions for a drinks sponsor or a nearby watering hole to facilitate networking welcome. Add a comment if you are coming but don't forget to email to get through security on the day and to ensure your place.

Is a Registered Trade Mark a Defence?

Always good to have a shield. C info

Sally Cooper reminds us that here in the United Kingdom, we have a provision of the Trade Marks Act 1994 (section 11(1)) which says :

 "A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)"

This contrasts sharply with the the position of a Community Trade Mark in the UK. The ruling of the Court of Justice in the European Union which, in C-561/11 of 21st February 2013 [Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza] which says :

"Article 9(1) of the [ Community Trade Mark ] Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand".

Now we have Marques reporting on 27th September 2013 a decision from the Spanish Supreme Court delivered on 24 July 2013 (Editorial Prensa Canarias, S.A. v. Radio Pública de Canarias S.A.) declaring that no infringement of trade mark rights will be established against a defendant that is using a (later) valid trade mark registration. The UK and Spain singing in harmony – who else ?

Barbara Cookson adds: Such an attitude  in Spain keeps the opposition practise in the national office vibrant. Hopefully the Fast Track Opposition procedure in the UK with a reduced £100 fee and the new Form TM7F introduced today will save some trademark claimants the trouble of having to invalidate infringing trade marks on the national register.

It seems to me to be good advice for anyone concerned about possible infringement to file their UK trade mark to establish a first line of defence. Even though the CTM at only three times the cost, covers so much more territorial, it cannot provide a shield. However if the brand bully has a CTM the UK mark is no defence either.