Buying Time for Christmas: a guide for UK Trademark Opponents and Applicants

This is the season when many trademark agents look at their docket and realise that some of those imminent deadlines (and maybe even ones early in the New year) can't possibly be met now that their clients have run off to enjoy the Thanksgiving holiday without providing the material that is needed for their evidence in a UK opposition.

If you read The  Manual of Trade Marks Practice  - the bible of practice published by the UK IPO -  Paragraph 4.9.1 of the Tribunal Section chapter at page 438, you will obtain the impression that extensions are not readily available:

"The timetable is to be adhered to. It provides more than enough time, in the vast majority of cases, for facts or submissions pertinent to the pleaded grounds to be gathered and presented to the Tribunal. Parties should not regard this timetable as a ‘starter for ten’, to be varied at a later date. The Tribunal will, in exceptional cases, consider requests to extend the time allowance. Such requests will need to be fully supported with explanations as to not only what has been done to date but, more particularly, what is left to do and how long it will take to produce the evidence. The Tribunal will also need to be satisfied that the extra time is warranted in the context of the pleaded grounds and what is necessary to determine the case efficiently and fairly."

Therefore a trade mark applicant might reasonably expect things to move along. For the new business applicant this can be necessary, especially if there are investors concerned about a shadowy or real threat of infringement proceedings following on from a successful opposition.

If you read the cases published on extensions you will find this hard line endorsed.

But wait. This is not the full picture.The decisions on extensions that are published are the ones where a refusal of the extension decided the whole case. If the extension is allowed the reasons don't get published. This is an omission that could be rectified if interim hearing decisions were published.

In ZILLION O-193-16 Ann Corbett refused a retrospective extension of time. It was a cancellation action, rather than an opposition and it would have been possible for the case to be re-started. Nevertheless, Ms Corbett held

"Despite the fact that evidence has now been received, and notwithstanding that this may lead to the commencement of another action between the same parties covering essentially the same subject matter (a matter on which the applicant may wish to consider seeking professional advice), I was not persuaded, in the circumstances of this case as set out above, that the requested extension of time should be granted. The request was therefore refused."

Note that these were litigants in person and you, my friend, are more likely to be a professional and know that you regularly get extensions with the flimsiest excuses if the evidence is in by the time of the hearing and there are other grounds so that the case will not close. If you have  a decent reason and can show reasonable efforts you are even likely to get the extension in response to a request without a hearing.

If the UK Registry provides an indication that the extension will be allowed there is absolutely no point in the other party objecting. It will be futile and will simply increase their costs and costs exposure. Never do it. Hearings arise when the UK Hearing Officer is minded not to allow the extension. When the requesting party would prefer the initial indication be maintained they will likely put some effort into preparing for the hearing. The first thing to do is ask your counterpart if they plan to have evidence submitted in time. If they do, back off and forget it. Of course they may deceive you, which is unprofessional, or simply not answer.

If you fail to have the evidence ready for the hearing life can be harder as even a professional representative found in ALOHA  where on 27 April 2016 Heather Harrison refused an extension to an opponent without completed evidence, with this level of reluctance:

Whilst I am satisfied that the reasons in support of the original extension request were sufficient to justify the length of time granted, nothing has been provided to persuade me that the opponent has taken any steps to finalise its evidence in the intervening period. Whether the parties continue to negotiate is clearly a matter of uncertainty. In making my decision, I have kept in mind that an apparent lack of diligence by a party does not mean that an extension cannot be granted. I have also considered Ms Hobbs’s request that I impose a further, final deadline and I have some sympathy for her position. However, in the absence of any information about the current state of the opponent’s evidence, let alone an assurance that it is near completion and will be filed imminently, it would not, in my view, be appropriate to allow the opponent further time

Once again this decision only came to be published because it led to closure of the opposition file.

You should copy the other side and the Manual suggests in bright green letters

"Failure to Copy to the Other Side or to Provide Detailed Reasons Will Result in Refusal of the Extension."

This is also not true, but why risk it.

There are also alternatives to an extension. If there are negotiations or you could initiate some, you might be able to persuade the other side to agree a stay. That has the bonus of not requiring a fee, but you do need consent and you still need to support it with convincing reasons for the request. Turn to page 439 and section 4.9.2 of  The  Manual of Trade Marks Practice  .

So if you need to buy time, remember:

• your reasons
• your fee (yes sometimes lazy opponents try to avoid the fee - a retrospective request also costs more)
• that you do need to have the evidence complete before any hearing
• it would be helpful to have some non-evidential grounds and a reasonable prospect of being able to start over

Costs in Trade Mark Oppositions

Did you happen to notice that while we were enjoying the Orlando sunshine at INTA2016 the UK IPO put out a new tribunal practice note 2/2016 relating to scale costs in oppositions. Here it is in case you missed it. It's not very exciting. In fact it's almost depressing.

The general principle in the UK is that the winner is reimbursed his costs by the loser. It sounds as if the winner should therefore not be out of pocket. This is not the case. It is sometimes difficult for clients to understand that. In the case of UK trademark opposition proceedings the registry uses a nominal scale of costs which bears no relation whatsoever to the costs that you might be charged by even the most economical of professional advisers.

So costs don't put the winner back in the position he would have been had he not had to fight the contest. What are they for then? I think the philosophy is that they're supposed to act as a deterrent to bringing oppositions. I am ready to be corrected on this if you have any better justification for this irritating procedure. As the practice note explains, they are also available to deal proportionately with unreasonable behaviour. What is unreasonable is a very subjective thing and hearing officers have quite diverging views on the behaviour of some parties. It really depends on the lens that you are looking at it through. If you are facing a bad faith claim it is always unreasonable. If you are making one it is totally reasonable.

Trademark owners now must bring oppositions if they want to stop conflicting marks getting on the register. Although they can do this as litigants in person, it isn't ideal for them or their adversary or the office. Therefore, in the interests of efficient opposition procedure we need to reduce complexity and encourage competent professional participation.

If you commenced your opposition after 1 July the new scale applies to you. This is going to be fun on consolidated cross oppositions. But not such fun because the difference between the two scales is minuscule. In fact the scales are pretty minuscule and strangely remain focused on the largest amount of costs being reserved for the hearing not its preparation. Personally I think it might be a good idea if we either had fixed costs (like the silly scale used by EU IPO were all representation is deemed to cost €300 or €550 in the case of appeal even if the winning party didn't participate)  or none at all.

Fast Track costs are still capped at £500 and even I cannot offer a client that low a fee for the most streamlined no-negotiation opposition. This may be acting as a deterrent to the use of fast-track oppositions. The other major deterrent to the fast-track opposition is the upfront requirement to demonstrate use which makes them much more expensive than ordinary oppositions if your earlier rights have any seniority.

With Brexit about to happen we no longer have to follow harmonisation rules. Many are useful but the inundation of earlier rights that community trademarks became prevented the UK from giving trademark owners a reasonable degree of protection. We can rethink this now.

Proceedings before the European Patent Office

Not many blog posts recently. I have been reading a new book from Edward Elgar . They kindly sent me an ebook to review but as its very attractively priced at £44 for the paperback if you buy it on line, I recommend it to all practising patent agents and trainees. Its been written by Marcus O. Müller (a chemist) of the Boards of Appeal of the European Patent Office, Munich, Germany,  and Cees A.M. Mulder, European Patent Attorney, Maastricht University, the Netherlands in the style of dumbed up  a FOR DUMMIES book.

What you get is a candid, accurate and informative guide to how the EPO's judicial process works. There are a myriad of out take  Examples and Practical Advice paragraphs designed to make the attorney more effective in this unique environment. How to play with added subject matter and Article 84 are just some of many ploys on which both seasoned and novice attorneys will receive enlightenment by reviewing this text and taking its lessons to heart.

It has been published with the approval of the EPO. The text is completely uncritical but the critical (but hitherto ignorant) reader might find themselves crying aloud about some of the examples given and there are lots. If you happen not to be experienced in EPO opposition procedure but have read suggestions that the procedure of the new Unified Patent Court should be more EPO like (or even that the IPEC procedure already is) , this book will explain what they mean and you should read it so you can stop that idea in its tracks.

However the EPO procedure is what entrepreneurs have, if they are to get a European Patent or a Unitary Patent in the future. You can't get to the wonderland of the Unified Patent Court if your patent can't survive the opposition stage.  Your competitors will take you there if your patent could be a problem for them or even if they just don't like you as costs are no deterrent. Normally each party bears their own costs - but Chapter 6 will explain when you might expect an apportionment of costs, but its not mentioned that it is ever to punish a vexatious opponent, and it is not. 

The book isn't aimed at inventors but one who has been to the EPO and may find himself there again defending a genuine invention may find it valuable. It will tell him not to employ an "old school" agent - who according to the authors' practical advice is one who writes the application with ambiguous terms, woolly stories, twists and turns, instead of in the way the EPO likes to see it, with a single, clearly defined invention, problem-and- solution approach, etc.The authors admit in their conclusion to the chapter on drafting issues that

"quite a few patents are lost after expensive opposition and appeal proceedings, even though there seems to have been an invention that could have led to a valid patent, simply because the original drafting of the patent application was not appropriate." 

PAMIA take note.

Although neither author is an English native, the book is very readable. If I had a trainee he would be reading it as required study in  his second year. I would give him a paper copy and check it at appraisal time. No dog eared corners and sticky notes would not be a good sign for his future career.  The insight it gives into how the opposition division and boards work behind the scenes is very useful. You learn how those alleged minutes are written and who is allowed water or recording equipment. You learn that its worth paying an appeal fee just in case and get the fee back if no one else appeals. I wonder how many appeals start because both sides appealed just in case.

This book is a valuable addition to sparse library available to practising patent agents. Hopefully it will be followed by other usable texts. We are now blessed with a whole academia of intellectual property that delight in studying the issues arising in big court decisions,  but much less is written to help agents make inventions become valid patents that will be valuable business assets. Well done Edward Elgar for bringing us something so usable.

and NOW for something completely similar - by Sally Cooper

Time passes by – days and weeks and months and years come and go – and Trade Mark practitioners in the UK tussle with section 5(2)(b) Trade Marks Act 1994 where it says

“A trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public”. 

And where the first part of an earlier trade mark is (visually or aurally or conceptually) the same as the first part of the mark applied for, thoughts of the consumer and “imperfect recollection” come to mind and – particularly if goods are identical – there is concern the applicant will fail in its quest for registration.

So finding a case where an opponent succeeds on (visual and aural and conceptual) similarity, but fails on likelihood of confusion brings joy to the heart. The case in question is O-069-14 of 10th February 2014 being an Opposition by Now Wireless Ltd against a mark applied for by Nowcomm Limited.

This note is limited to matters set out at pages 20 / 21 (paragraphs 53 / 58) : in these two pages Mr Martin Boyle as Hearing Officer for the Registry sets out the two marks. He then expresses his considered views on similarity of marks which (in summary) are :

• “There is not more an average degree of visual similarity” and 
• “There is not more than a low degree of aural similarity” and 
• “There is a reasonable degree of overall conceptual similarity”. 

But joy comes with the findings that follow :

“I have found that none of the component parts of either mark are inherently distinctive, and that NOW is not markedly dominant in either case. I have found the earlier mark to be of low distinctiveness (though I bear in mind that weak distinctive character of an earlier mark does not preclude a likelihood of confusion) and even if I am wrong about that, the element NOW alone has not acquired a distinctive character as a result of the use of NOWWIRELESS. I have found an average degree of visual similarity, a low degree of aural similarity and a reasonable degree of conceptual similarity between the marks. I have found the goods and services of both specifications are largely aimed at professional business users. Even when bought by individuals they will be considered purchases. There will be a considerable bespoke element to many of the services and the requirement of technical suitability for intended use will mean they will be bought after technical discussions to ensure they are fit for purpose. In the light of this, even bearing in mind that I have found goods and services to be identical, I do not find that there is a likelihood of confusion (emphasis supplied)”.

The applicant applied to register its mark in July 2007 and opposition was filed in October 2008 : (to its credit) the UK Registry pressed on to its Decision notwithstanding that the earlier mark on which the opponent was able to rely was its CTM Application 4650156 filed in 2005 and which is the subject of two (suspended) oppositions. Time passes by – and we wait to see whether the opponent will appeal !

The Duck points out that its not possible to declare an earlier mark invalid in opposition proceedings but it does seem that the applicant drew attention to Arnold J's decision of NOW invalidity in the fight between EMI and Starbucks. Since that decision was upheld by the Court of Appeal the remaining distinctive character in both these marks is their choice of a companion term and since those are different the opposition was rightly doomed. Now can we move on to wonder if Now is the 73rd most common word in the English language to wonder where com comes.