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Friday, 8 October 2010

Deadlines for filing UK trade mark oppositions: a concerned Cat writes

Among the various concerned emails that fill the Kat's bag to bursting point is one from Cat Slater (Serjeants), who writes:
"Can I be the only one that is mystified and annoyed at the new Practice Notice (http://www.ipo.gov.uk/t-tpn-42010) issued by the UK's Intellectual Property Office (IPO)?

The IPO has decided that, with immediate effect and contrary to decades of practice, it is now interpreting the trade mark opposition period such that it includes the day of publication [of the application] and therefore excludes the day two months later. In other words, oppositions must now be filed the day before the same numbered day of the second month.

This is out of step with the OHIM opposition period and all other UK and European patent and trade mark deadlines that I am aware of. Surely, if they think there is a problem, they should change the wording of the rule?"
Says the IPKat, other people have written in with much the same comment.  None of them is called Cat -- but they too are deserving of an answer.  He knows many people who work at the IPO and, with very few possible exceptions, they give the impression of being serious, responsible souls who keep the interests of their users in mind.  One of them, for sure, will want to email the IPKat here and explain why this long-established practice has been changed.  If the reason is good enough, he's sure that OHIM and everyone else too will want to fall in line with the new UK practice.  Merpel adds, from the fact that this seems to have caught practitioners by surprise, is it possible that there hasn't been quite as much consultation as one would ideally wish?

See also Birgit Clark's post on the MARQUES Class 46 European trade mark blog here.

12 comments:

Chris McLeod said...

It's a fudge, in my opinion. My take is that they did not want to change the rules by a new SI, so they have fudged it on the basis of the Interpretation Act 1978, leaving an inconsistent approach when compared with other dates in the opposition procedure, and with other jurisdictions.

Ben Mooneapillay said...

I agree that this is a pointless change in practice, which only serves to complicate matters for users.

Ben Mooneapillay.

Chris H said...

This is an unusually bad move by the IPO, bringing UK practice OUT of line with, well, virtually everyone else. What happened to the harmonisation drive?

Surely it would be better to add a line to Rule 17 saying 'the day of filing shall not be included in the period' (e.g. see Paris Art 4C(2)) or amend 'beginning with' to 'following' (as per EPC Rule 131(2)).

The new practice is not tenable as it will confuse applicants and create havoc with attorney's diarising systems.

Come on IPO sort it out. It's really not difficult. I for one would like to know why the Rule could not be amended instead. Perhaps we should call Al Skilton (Deputy Head of Tribunal Section, and contact for relevant enquiries) on 01633 814585 and find out ...

Anonymous said...

It's ironic that 18(3) contradicts itself according to the IPO's interpretation - 'relevant period shall begin on the notification date and end two months after that date'. Doesn't this suggest the IPO is wrong after all, as clearly the intention was to set a deadline of x months following the date.

Anonymous said...

It seems to be consistent with the best traditions of patent legislation drafting by the parliamentary draughtsmen: older practitioners will recall the condemnation of the transitional provisions of the 1977 Patents Act by the courts: " ... a paradigm of obfuscation ...". More recently, instead of referring to the convoluted wording of a UK statute, a judge referred instead to the corresponding provisions of the European legislation that it was supposed to give effect to.

Kate Széll said...

The reasoning is given in the Practice Note. My guess is that some enterprising (or irritating, depending on your outlook) applicant has argued that an opposition must fail as it was not filed in time. The UKIPO can't change the law and, if they realise that they have been getting it wrong, they have to change their practice. In this situation, the outcome is a tad silly, admittedly, but I think it must be right.

Kate (not quite a Kat but nearly)

Aaron said...

Yep agreed. The only plus point being that now there is a good reason to employ a specialist.. I am waiting for the first large IP department which professes to do trade marks (but doesn't specialise) to get it wrong.

As larger litigation dries up, more firms are getting into OHIM/UKIPO disputes, and not always doing a great job (to put it gently). This should scare them off a bit,

Perhaps we should run a book as to which firm will screw up first!

Anonymous said...

Cat may well be mystified and annoyed, but the reason the Registrar has done this goes back a long way. To 1688 in fact. As the Bill of Rights put it in 1688, "the pretended Power of Dispensing with Laws or the Execution of Laws by Regall Authoritie as it hath beene assumed and exercised of late is illegall". It is not within the power of an executive agency to ignore a piece of legislation that it would prefer to be differently worded no matter how inconvenient.

Why did this come to light? - presumably because of a well-represented a trade mark owner faced with an opposition on the last day who was looking for a way out. But that doesn't matter. The language really is unambiguous and there's just no excuse for ignoring it once the point has arisen.

Anonymous said...

In view of the evident inconsistency and possible confusion that the new rules have introduced, it is rather ironic that the consultation document for the 2008 TM rules
http://www.ipo.gov.uk/consult-tmrules.pdf
includes the following statement

3. The policy objectives of this exercise are fourfold:
I. Consolidation of existing changes to the Trade Marks Rules 2000 in order to increase accessibility and remove existing duplication, inconsistency and possible confusion.
II. Bringing the UK fully into line with international best practice and enabling ratification of the Singapore Treaty on Trade Mark Law.

Allan James (IPO) said...

The matter was raised with us by a firm of Trade Mark Attorneys who questioned whether, following a subtle change to the wording of the Rules in 2007, we were calculating the opposition period correctly. They showed us the case law that suggested we were not and, after we had looked at it, we decided they were clearly right. Once we had come to that realisation we were bound to act. Even if we did not, others would start objecting that oppositions were filed a day late and we would be required to rule in their favour. There was therefore no option of knowingly continuing to apply the Rule incorrectly until some specified point in the future, or until we had decided upon a longer term solution.

On average, 15 oppositions are filed each week on the last day of the opposition period. So we decided we had better tell everyone where they stood ASAP in order to limit, as far as possible, the scope for procedural disputes.

The question of whether the Rules ought now to be changed in order to permit us to re-introduce the previous approach to calculating time periods is a separate matter. We can look at that, but until a change is made to the Rules we are bound to apply the UK law as it currently stands. And it is surely better that everyone is as clear as we now are as to what that means.

Anonymous said...

Allan:

You are of course assuming that everyone reads the Practice Notes or the IPkat.

What about foreign attorneys who give last-minute instructions i.e. on the last day of the traditional three-months-from-publication deadline?

They would probably not be aware of the new shortened period.

Given that the accepted practice has not changed in the last umpteen years, surely this is evidence of the intention of the law, despite the precise wording being a bit off.

Indeed (to borrow from Catnic), perhaps this 'should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge'

Anonymous said...

@ Anon 11-Oct-10:

Nemo censetur ignorare legem

...particularly not practioners.

Think of it as good material for a PR opportunity with foreign associates.

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