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Tuesday, 14 March 2006

REVOCATION AND PARTIAL USE - TIME TO TAKE A TRIP TO LUXEMBOURG?


"Computer programs" too broad a category, it seems ...

This decision, which dates back to 16 January 2006, mysteriously appeared on this morning's selection of new cases on Lawtel. It's Intelliq v Datasphere, an appeal from the UK Trade Marks Registry that was heard by Lord Chancellor's Appointed Person Geoffrey Hobbs QC (full text from the Patent Office website here).
Intelliq applied to revoke Datasphere's figurative mark which was essentially the word DATASPHERE in capital letters (portrayed, above right, with other material). This mark was registered for computer software, tapes, disks and other related products. According to Intelliq there had been no genuine use of the mark in the United Kingdom by Datasphere or with its consent in relation to any goods for which the mark was registered. The hearing officer ruled that the specification of the registration of DATASPHERE should be restricted to computer software and computer programs. Intelliq appealed, arguing that the evidence filed by Datasphere was insufficient to establish genuine use of the mark for any of the goods for which it was registered, since all it showed was use in relation to services. Intelliq also argued that the evidence of use did not justify the retention of the registration for all forms of computer software and computer programs.

Geoffrey Hobbs QC ruled as follows:

* While the evidence was thin, the hearing officer had been required to assess it as a whole and was entitled to regard it as indicative of a course or pattern of dealing in which the trade mark was used in the UK during the five years preceding the date of the application for revocation.

* An order reducing the scope of a specification of goods should identify and define not particular examples of goods for which there had been genuine use but the particular categories of goods they should realistically be taken to exemplify.

* In relation to the extremely broad range of products covered by computer software and computer programs, the evidence indid not show use of the trade mark in relation to computer software and computer programs in general: it indicated only that use of the mark was limited to items embodying computer software and computer programs for specific purposes, Datasphere clearly being a specialist provider of niche computer software and programs. The evidence of use was however insufficient to justify retention of the registration for all types of computer software and computer programs.

* The specification of goods for which the mark was to remain registered under was therefore reduced so as to cover computer software and computer programs all for use in or with banking or financial telecommunications systems.
The IPKat agrees that evidence of use must support the registration, but he recalls the Court of First Instance decision in ALADIN/ALADDIN (Case T-126/03), in which that court allowed an appeal against an over-narrowing of the scope of registration of a trade mark for metal cleaners. At present, practice appears inconsistent as between different descriptions of goods (computer programs are too wide, but pharma products aren't; metal cleaners are somewhere between the two): what we need is a reference to the ECJ or an appeal from the CFI to clarify the extent to which use within part of a description of goods justifies the continued registration of a mark for the entire description of goods. Merpel says, how effective is partial revocation here? The products for which DATASPHERE is no longer registered are still likely to be "similar goods" when considering the likelihood of confusion in infringement and opposition proceedings.

Other interesting words ending in "Q" here, here and here
Avenue Q here
What to do with your Q here

1 comment:

Tigga said...

All computer software similar..? Would consumers assume that high-end accountancy programs using a similar mark as a computer game were economically linked - probably not. Similar uses, users, etc.. probably not.

Partial revocation definitely of potential use in this situation - we mustn't forget the interest in both parties having a few 'chips' in the poker game of negotiations.

I think that an ECJ reference is appropriate, if only to confirm the UK approach!

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