Only a few hours after the AmeriKat posted her article last night (or this morning, depending how accurate one wishes to be) on Mrs Justice Macken's speech at IBIL's Annual Hugh Laddie Lecture, she received a flurry of e-mails commenting on the issue raised by the judge's speech on the issue of genuine intention to use in trade mark law. One of the most interesting e-mails, and most convincing of arguments, she received was from Roland Mallinson of Taylor Wessing (picture, left). With Roland's kind permission, the AmeriKat reproduces his comments below:
- where an applicant with no history of broad trading (or perhaps not having traded at all) applies in all Nice classes using class headings;
- where the application is in respect of goods/services for which the applicant previously held a registration but which was just revoked for non-use in respect of those goods/services and possibly even just where the timing of the application is suspiciously close to the date on which an earlier identical unused registration becomes revocable for non-use;
- where the nature of the mark itself clearly identifies one type of use and yet the specification relates to a totally different use; and
- where the applicant has applied for precisely the same mark at the USPTO but with a considerably narrower specification (due to the need to show use) - this is more controversial and perhaps should just raise a suspicion that all of the claimed broad use isn't intended in the EU.