From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 8 July 2013

No more kitchen sinks, says Dermot Doyle -- and he's right!

Elsewhere it's a sink. In Ireland it's
a ground of opposition ...
In the deep and dismal past, back in September 2005, in a blogpost on the Irish Trade Marks Registry decision in McDermott Laboratoties (sic) Limited's application; opposition of May & Baker Ltd (case available here) the IPKat railed against what he regarded then and still regards now as the thoroughly pointless, unproductive and unmeritorious practice of listing all the grounds of opposition to a trade mark application that you can find in the statute and then not even bothering to substantiate more than one or two of them. In that early blogpost this Kat wrote:
"May & Baker ... opposed on a load of other totally unsubstantiated grounds. The IPKat considers this to be a stupid, unnecessary, time-wasting practice that has no right to persist in the fair land of Ireland and which does no credit to any of us in the twenty-first century. As Tim Cleary [the Hearing Officer in that opposition] said:
"Notwithstanding the fact that the Opponent did not formally abandon the other grounds of opposition, namely those under Sections 6(1), 8(1)(b), 8(3)(b), 8(4)(a), 10(1), 10(3), 10(4)(b), 37(2) and 42(2) of the Act, I am satisfied that there is no need for me to give them any serious consideration [that's NINE grounds of opposition, raised for no good reason]. Because those grounds have not been supported by relevant evidence or argument, a prima facie case has not been made out under any of the relevant Sections of the Act and there is no onus on the Applicant to respond. Nor do I consider it necessary for me to do more than to state that I dismiss the opposition under each of those Sections as unsubstantiated".
At the time, this Kat asked a number of Irish trade mark practitioners why they kept on raising of grounds of opposition just for the sake of doing so and the answer he received was more or less a friendly reassurance that "that's just the way we do it in Ireland".

Eight years later, this cost-generating and pernicious practice is still rife and, if anything, it appears to be on the increase. The words in the passage quoted below are not those of the IPKat, nor even of Merpel. They are the words of Dermot Doyle, acting for the Controller, in his 9 May 2013 ruling in T.M.R. Restaurants Ltd's application; opposition by Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers (you can read the case in full here, though the IPKat will be posting a note on the substantive decision in this futile, dead loss of an opposition in the near future).  For the record, this was a opposition by the owners of the Monte Carlo casino, among other things, to an application to register a figurative mark containing the words "Monte Carlo" for a fish and chip shop in County Monaghan, Ireland.  Anyway, said Dermot Doyle:
"30. Having dealt with all the absolute grounds of opposition I must take this opportunity to express my concern about the all-too-common practice [i.e. a practice that has persisted in Ireland even as other countries strive to simplify, streamline and generally tighten up their IP dispute resolution procedures] that has become part of what I regard as the “kitchen-sink” approach to oppositions, whereby opponents cite a multitude of sections of the legislation as grounds of opposition, including those that the opponent knows cannot succeed, though which requires applicants to undergo unnecessary work and expense to address. Typically no evidence is adduced or arguments advanced to substantiate these grounds of opposition. For example, over the years, all oppositions before me that are based on Section 8(4)(a) have been dismissed because opponents have always failed to identify the actual law that expressly prohibits the mark under attack. Other examples include the frequent citing of Sections 37(2) and 42(3) regarding the use of or the intention to use the mark, and the failure to satisfy the Controller that the requirements for registration have been met, respectively; neither of which can ever succeed in its own right. The charge of “bad faith” appears regularly without being properly particularised or supported by evidence. I raise these points by way of encouraging opponents and, in particular, their legal representatives, to refrain from adopting the “kitchen-sink” approach, so that the cost and time taken to bring opposition proceedings to a conclusion are minimised. Failure to do so may lead to the necessity to take into account the approach adopted by opponents when ultimately assessing the award of costs, irrespective of which party is successful [says Merpel, this sounds like a version of the pay-to-waste policies favoured by green economists over the years]".
For the record, the opponent in this case raised eleven grounds of opposition, some of which did not even exist as grounds of opposition under the Irish Trade Marks Act 1996.

This Kat proposes to keep his eye on the raising of pointless, unsubstantiated grounds of opposition and to expose this pathetic practice to the public glare whenever possible.  He is also offering, by way of inducement, katpats to those IP practitioners who raise only grounds of opposition that they seek genuinely to substantiate, even if it turns out that those grounds are not ultimately successful.

6 comments:

Anonymous said...

Not that I'm an expert, but wouldn't a good response to this from the trade mark owner be to deal with the hopeless points first while pretending that these are the opponent's strongest points, so that you are "on a roll" before you get to the points where the opponent might suceed?

Chris Moore said...

Perhaps Mylward v Weldon (http://www.bailii.org/ew/cases/EWHC/Ch/1595/1.html) is the answer!!

Hastings Guise said...

I can't speak for Irish practitioners but among UK practitioners it is also common practice to include all grounds of opposition that may be applicable when opposing UK or CTM applications.

There is sound tactical reason for this: it is often the case that the decision to oppose may be made by a client on the basis of relatively incomplete information about either the other party's business, the seriousness of commercial conflict, the availability/accessibility evidence on their own side (particularly for larger international businesses) and the likelihood of settlement.

By including all possible grounds of opposition at the outset, the client is given flexibility in terms of what resources they commit to the matter as it progresses. This is particularly relevant when considering reputational/goodwill based grounds which will increase costs significantly if supported fully. In some cases, as the matter progresses it becomes appropriate to spend that cash in other cases not.

I have seen a number of oppositions filed by other practitioners (often elsewhere in Europe) where the adoption of narrow grounds at the outset has prevented the relevant party from fighting the matter as aggressively as they might have wished.

I can see that from the perspective of a Hearing Officer it may be frustrating to have extraneous grounds of opposition rattling around without support and I would agree that it is good practice to cut these out as the matter progresses when they are no longer relevant. However, it is important to remember that a given instance of formal opposition proceedings is only one part of a wider set of dynamics surrounding both that specific commercial dispute and the parties' overall enforcement strategies and associated budgets.

Jeremy said...

Hastings, I think there is a great deal of difference between "all grounds of opposition that may be applicable", which suggests at least that they may apply, and "all grounds of opposition listed in the statute".

Hastings Guise said...

Jeremy -- I think I misunderstood. Listing literally every theoretical statutory ground irrespective of the apparent facts of the case clearly doesn't make sense. In fact, I think that approach can have its own dangers: a public assertion of lack of distinctiveness, for example, against closely a similar mark could make you look rather stupid in the long term...

Anonymous said...

It seems that opponents or rather their advisers are using formulaic grounds of opposition to start and then looking for supporting facts.

Perhaps the Controller, rather than expressing his exasperation at such practises, should penalise unreasonable grounds in his costs ruling.

I am sure that if the Controller drew attention to what seems to amount to wasted costs then parties could reach a view as to whether their advisers were negligent in giving their advices regarding opposition strategy.

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