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Monday, 17 June 2013

Security interests in trade marks: has something gone awry?

Every so often the IPKat is asked to draw readers' attention to an issue of interest or concern with regard to the administrative machinery that underpins the smooth and efficient operation of the IP system. Here's one such instance, in the form of a reader's email:

Perhaps there's no room left in the computer ...
This may have passed me by [writes Mark Robinson, of Mark Robinson Transactional Intellectual Property Services], but I have just noticed that the trade mark section of the UK Intellectual Property Office (IPO) website no longer provides online details of registrable transactions such as security interests. In the recent past, a search against a trade mark would indicate a security interest together with details of the holder and a brief summary of the restrictions on the trade mark owner. Now the website just reveals that there is a 'registrable transaction', the date on which the form was received, and the journal reference number. If one wants to obtain further details (and assuming that one doesn't keep a lifetime's supply of journals), one has to request an office copy of the file. This costs £5 per mark and there's a two week backlog. 
 There seem to be a number of issues here:

1. in an age of making information freely available, why has the IPO suddenly changed its system in order to prevent free and immediate inspection? 
 2. it is important for all users of the IP system that any security interests (or other registrable transactions) be immediately apparent from a search of a trade mark. Under the new system, the case details no longer indicate the existence of any registrable transactions. In order to find these, you have to click on 'view historic case details' and then click again on 'view historic details'. This requires a degree of dogged persistence that should not be necessary to ascertain important limitations on a trade mark; 
 3. having finally established the existence of a registrable transaction, is it reasonable for the public to pay £5 per mark (and wait two weeks) in order to see this type of important information?
I am not aware of this change being the subject of a public announcement by the IPO, and I don't yet know whether it also applies to patents and registered designs.
Do any readers -- including those from the IPO -- have any comments or explanations? And what happens in countries other than the UK? Do let us know.

3 comments:

Mark said...

It sounds as though the TM Registry should engage in some "joined up government" by cooperating with Companies House, which also records charges on their (instantly accessible) databases. There is a charge of a £1 or so to access certain information.

Maybe TM Registry should migrate to the Companies House software?

Lynda Adams said...

We are currently in the process of resolving a number a teething problems resulting from the significant IT and business change that the UK Trade Mark Registry has recently undertaken. The missing security details should be available on line in the next week or so. Please accept our apologies for this temporary inconvenience.

Anonymous said...

The details of security interests granted over a trade mark are essential, as the public availability of this information underpins the doctrine established in Van Gelder, Apsimon & Co. v Sowerby Bridge United District Flour Society.

For further discussion of Security interests over IP rights under English law see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2073301

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