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Friday, 24 June 2011

Genuine Intention to Use - Practitioners Speak Out

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:

"As regards Mrs Justice Macken's answer to my question [see report of lecture and Roland's question here], I can think of some situations where one might consider an application to have been made with no genuine intention to use (or perhaps should give rise to a rebuttable presumption of as much). These include:

  • 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.

Whilst disclosure and cross-examination are the best tools for revealing intent, clearly it is not desirable to make that routine. However, neither would be necessary to prove the above facts if they exist.


I was reminded by my neighbour in the auditorium (thank you Stephen Jones) that, in days of old (Rule 21 under the 1986 Rules) the Trade Mark Registry (as it then was) could raise an office action questioning the genuineness of the intention to use. The applicant was then required to justify the breadth of the goods/services claimed or else face refusal of the application. How about resurrecting that for OHIM? Clearly a supermarket, department store or major industrial conglomeration could well have reason to apply in respect of a vast range of goods/services but that's unlikely for a flower shop or taxi business.


As I mentioned, the UK option potentially arises pre- or post-grant (under s3(6) and s47 TMA - relating to bad faith). Bad faith isn't a ground for pre-grant objection to a CTM (Art 7 and Art 46 CTMR) but it is post-grant (Art 52(1)(b)). Then it's a question of whether having no real intention ever to use amounts to "bad faith". Ignoring what the cases have said on this, it seems reasonable to think it should do. However, perhaps it may be preferable not to attribute the stigma of "bad faith" to this (connotations of fraud etc - which was how the USPTO has been seeing this). A better option would be to make a lack of any bona fide intention to use a standalone ground of objection (akin to s26 of the 1938 TM Act). There could be an initial presumption that a statutorily declared intent is genuine. Case law should fairly quickly establish a suitably low standard of proof to show genuine intent. It would need something more than just a declared wish or ambition, e.g. with some consideration of synergy with existing or core business, opportunity and/or resource. The idea would be to ensure that only the completely unreasonable and deliberate land grabbers are affected. Over broad applications or over zealous attacks could perhaps also face adverse/indemnity costs orders, although this would require removing the fetters of the fixed scale awards for registries."

The AmeriKat sees a lot of merit in Roland's argument that there be an initial statutory presumption of a genuine intent, but if an objection on these ground was raised the proprietor need only show a low standard of proof (preponderance/balance as opposed to a "clear and convincing" in Ameri-speak) of a genuine intention to use the trade mark in order to rebut the objection. (The AmeriKat may just be tired, but the whole concept of rebuttable presumptions and standards of proofs in relation to objecting to registered IP rights, a la i4i v Microsoft, seem to be coming through in this debate).


What do readers think?


3 comments:

MaxDrei said...

On the issue of evidence in relation to "use", look what trouble it causes at the EPO, in opposition proceedings, where witnesses are occasionally "heard" but where there is no cross-examination. You only have to reflect on the EPO experience these last 30 years, to imagine how OHIM might look upon "intention to use" issues.

This is another issue where civil law practitioners and common law practitioners live in different worlds. Only England has dual citizenship in both these worlds. The City of London is pre-eminent in finance, even without this big advantage. Come on English IPR people. You have a unique opportunity to make money from customers all over the world, creating their IPR all over the world.

Anonymous said...

I fear that the clogging of the EU register is now a serious cost to business within the EU. Think of the time and expense of having to clear marks, including the time required to negotiate co-existence agreements (often in a foreign language) should your client have a high degree of risk-aversion because of the level of investment they are putting into a mark.

In my view, the only effective remedy requires the threat of the wholescale invalidation of the entire over-wide trade mark, as provided for by the infinitely-better US system. Overclaiming *is* bad faith.

Proceedings where the ultimate sanction is merely a minor costs-award (which in practice the senior rights holder generally avoids by settling an action early) simply provides no deterrent to the initial overclaiming.

In the world of patents we are quite used to the sanction of invalidity for overclaiming. Why not trade marks?

The only other solutions I can think of are:
1) Additional payments if the specification exceeds a certain number of characters (as they do in India)
2) Charging for the individual items within a class (a "semi-colon tax").
3) The Nice categories being split into subcategories, with applications charged for per sub-category. I have never worked out what the code numbers are that are listed next to the items on the Nice database, but a system of subcategorisation might well be in place already.

Simon said...

The problem is not necessarily "overclaiming" by providing a long description. The problem is claiming the whole class heading.

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