For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 20 December 2006

Notification, not examination: the next step; Golden opportunity


Notification, not examination: the next step

Now that it has decided to scrap the examination of trade marks on relative grounds (see the IPKat's earlier post here), the UK Patent Office wants to hear from businesses about the legal regime that will bring this about. Under the new regime, the Patent Office is moving to a notification system under which both the trade mark applicant and the owner of any earlier possibly conflicting marks will be told of each other's existence. The consultation document can be accessed here and you have till 12 March 2007 to make your comments.

Right: Small and Medium-Sized Enterprises (SMEs), as viewed by the UK government

The IPKat says, it's nice of the Patent Office to seek the view of businesses - which is all very politically correct in terms of being nice to small furry SMEs and all that. But it's really the opinion of their specialist legal representatives that's going to count, since it is they who will be manipulating the system on behalf of the small furry SMEs that everyone wants to be nice to.

Left: Small/Medium-Sized Enterprise as viewed by another SME that's competing with it

Merpel agrees and adds, "I can't wait to see what happens when the first action is brought against the Patent Office for failing to notify an earlier mark which it didn't consider relevant but which a competitor (or a court that agrees with him) did".


Golden opportunity

The IPKat's friend Laurence Kaye (Laurence Kaye, Solicitors) informs him of a position available for the right Paralegal or Legal Assistant. It's a golden opportunity to work - for pay at the market rate - for one of UK’s leading lawyers in the media/online/e-commerce field (check out the firm's website for legal focus, clients, ethos etc). The firm is based in leafy Radlett, Herts, with opportunities for remote and home-based work.

Above, right: payment on the usual scale ...; below, left: Radlett's busy commercial hub

The principal duties are (i) legal research, (ii) contract drafting and reviewing, (iii) research and writing of the firm's newsletter and (iv) attending and preparing notes of meetings. To do this you need (i) excellent written and oral skills, (ii) knowledge of IP law, (iii) IT skills (Word, Powerpoint and, ideally, Excel) plus internet literacy and (iv) attention to detail.

If you're interested, email Laurie with your CV and a covering letter of application to explain your interest in the role and what you would like to gain from it. Deadline: 26 January 2007.

4 comments:

Anonymous said...

Sometimes Merpel I think you have an evil streak. Re any action against the Patent Office (soon to be renamed of course) for non-notification: have you not heard of our immunity (section 70 of the TM Act)?

No doubt you'll tell me the circumstances when a statutory immunity cannot be relied on.

Merpel said...

Dear Anonymous, you're right: (i) I do have an evil streak and (ii) I'll tell you that the statutory immunity cannot be relied on.

The immunity under s.70 is conferred in respect of "any liability by reason of, or in connection with, any
examination required or authorised by this Act, or any such treaty, convention, arrangement or
engagement, or any report or other proceedings consequent on such examination". If there is no examination in respect of relative grounds, surely there is no examination in respect of which an immunity can be claimed?

Anonymous said...

Merpel I expected more from you. I thought you would cite some eg Human Rights case where an immunity didn't hold.

Instead, you rely on an overly narrow definition of 'examination'. In fact, we will still 'examine' of course under the new regime (by searching for earlier marks and notifying), but not refusing.

Merpel said...

Come now, Anonymous, you can hardly complain that a lawyer is acting like a lawyer. Notification might be 'examining' by your colloquial notion, but it's not examination within the meaning of the Trade Marks Act 1994.

Under Section 37(1) "The registrar shall examine whether an application for registration of a trade mark
satisfies the requirement of this Act (including any requirements imposed by rules)". The requirement is that the applied-for sign be a "trade mark" within the meaning of section 1(1).

If this argument fails, I reserve the right to plead the Human Rights Act 1998 ...

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':