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.

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Wednesday, 25 July 2007

Sole and Small IP folk meet

The dynamic duo of Mark Jefferiss and Allan James, both from the UK Intellectual Property Office, were the star turns at this evening's meeting of the Sole and Small IP Practitioners' Group.

Right: a likelihood of confusion caused by similarity - the classic relative ground for refusing a trade mark

Hosted in the rather lovely Bedford Row, London, offices of Collyer Bristow, the meeting was regaled with exciting tales of how the UK Trade Marks Registry is adjusting itself to the prospect of a life in which, instead of preserving existing trade marks from later applicants whose marks are vulnerable to refusal on relative grounds (see here for Euro-version under Directive 89/104), all they have to do now is give notice to the owner of the earlier right and then let nature take its course.

The speakers explained a great deal about how the new scheme is to work, once it kicks off on 1 October. The Registry has helpfully put up plenty of details on its website here, but it was clear from the meeting that many of those present had concerns that went a lot further. Some random points that were either mentioned or occurred to the IPKat are as follows:

* owners of UK trade marks and of Madrid Protocol marks designating the UK will be automatically notified if a potentially objectionable application is filed - but proprietors of Community trade marks and of Madrid registrations designating the European Union will not be notified unless they file form TM6 and pay £50 for the privilege of being notified for three years;

* the TM6 will be available as an online form only. Once it is completed, the CTM owner will receive notice of any potentially adverse application by email. UK trade mark owners will be notified by snail mail (left) - since the Registry doesn't (yet) have everyone's email addresses;

* there presumably isn't a Phil Collins-style discrimination problem here since all holders of UK rights are notified regardless of their nationality while all holders of CTM rights are not notified, equally regardless of their nationality;

* here's a due diligence point: when acquiring a portfolio of trade mark rights that include CTMs, it's worth checking to see whether a TM6 was filed;

* and here's an interim relief point. Will the fact that a CTM holder was notified of a potentially adverse UK trade mark application but did nothing immediately at the time be regarded as a delay that counts against its claim that the interim relief it seeks is urgent?

* however hard you try, you won't be able to get the trade mark examiners involved in lengthy correspondence. There are tight time limits and each side gets one shot at influencing his or her mind;

* where the owner of a CTM has exercised its option to be notified by filing its TM6, this should be visible on the Registry's online records from 1 October.

If you want to know more about the Sole and Small Practitioners' Group, just email Barbara Cookson here.

1 comment:

David Fell, Maclay Murray & Spens said...

I'm curious whether the examiners will consider a response that contains alternative arguments as a single response. For example, saying to the examiner:

1. I think you're wrong and here's my submissions on that point.

2. However, if you don't accept those submissions and you maintain the marks are conflicting, then please amend the specification of goods and services to the following... (insert revised specification here).

3. If you don't accept the amended specification will remove the conflict, please withdraw the application.

Technically it's just one response, right?

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