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.

Tuesday, 22 September 2015

Tuesday tiddlywinks

Community trade mark (CTM) cancellation proceedings for non-use before the Office for Harmonisation in the Internal Market (OHIM) can be brought by anyone. However they are typically brought in situations in which the applicant for cancellation has an actual or potential dispute with the trade mark proprietor. Cancellation applications are not hugely common; maybe the fact that you have to pay 700 Euros in official fees if you want to bring them might have something to do with it. This Kat understands that, over the past month, one of his trade mark attorney friends has been notified of non-use cancellation applications filed against a number of different clients’ marks in wholly different businesses, by the same entity – American Franchise Marketing Limited (AFM). According to Companies Houser, AFM appears to be a one-man enterprise, whose director appears to be one Michael Gleissner. The company’s address is just a mailing service address and the Kat's friend could find no evidence of its actual business interests. AFM has only one pending, opposed CTM application, this being for the word mark AFM.

What makes all of this notable is that Mr Gleissner appears to have filed a considerable number of cancellation actions -– possibly tens or even hundreds. There doesn't appear to be any easy way to search the OHIM Register for all cancellation actions filed by a specific applicant [perhaps one of our knowledgeable readers may be able to provide an answer as to how this can be done]. However the Kat's friend, checking some cancellation action numbers across a range, including the numbers of his clients’ actions, found cancellation actions running between numbers 000011340C (for the mark Indion for a Spanish registrant) up to 000011640C (for the mark TILT for a UK registrant), all in the name of American Franchise Marketing Limited. There does not seem to be any obvious connection between the businesses for which the various marks under challenge are registered.

The question behind all of this is: might Mr Gleissner be seeking to perform a public service in eliminating clutter, cleaning up the CTM register by bringing non-use cancellation actions against an apparently random selection of five-year-old-plus CTM registrations? Or does he really have genuine commercial plans to exploit all these marks himself? Is he, as Merpel suggests, in training for a Gold Medal in the Cancellation Olympics Ohimpics? Or is there some other motivation?

Around the weblogs 1. The US Ninth Circuit ruling in Lenz v Universal Music Corp. (the "baby dancing to The Artist Formerly Known as 'The Artist Formerly Known as Prince'" case) has attracted a lot of attention on account of its facts, but anyone who appreciates a good rant about the law may wish to take a peep at the always eventful Scrivener's Error blog, masterminded by C.E. Petit. Elsewhere, "Who owns a Banksy Mural?", asks IP Draughts' Mark Anderson, developing a theme covered earlier by Art & Artifice on the return of Art Buff to the unlikely location of Folkestone. Aistemos reviews the USPTO's open records policy regarding PatentsView and the problems of accurate official patent records. The jiplp weblog announces the next cooperative seminar on 28 October between leading IP journals JIPLP and GRUR Int., this time on a topic where IP is dwarfed by the enormity of alleged competition law infractions: the power of internet search engines (read: Google) to create, dominate and distort a market. Finally, on the MARQUES Class 99 design law weblog, Hidde Koenraad reminds the world that, when it comes to goods made in different colours, design right and trade mark rights do not work the same way.

Around the weblogs 2. The talented and resourceful Nedim Malovic contributes a guest post to the 1709 Blog on the recent Court of Justice of the European Union ruling in Case C-516/13 (the 'Labianca' case) on whether the distribution right encompasses the advertisement of copyright-protected works for sale. The same blog, thanks to Ben Challis, relates a half-million dollar attorneys' costs award in favour of "YMCA" co-writer Victor Willis's efforts to re-establish his credentials as an author,  The SPC Blog announces this year's long-awaited SPC Seminar for 10 November, again kindly hosted by Olswang: early booking is advised for this unusual event.

Apologies for not picking this up earlier, but there's another fascinating case hurtling towards the Court of Justice of the European Union (CJEU) in search of a preliminary ruling. It's Case C-427/15: New Wave CZ.  The request relates to the correct interpretation of Article 8(1) of Directive 2004/48 on the enforcement of intellectual property rights and it comes all the way from the Czech Republic, from the Nejvyšší soud České republiky in fact. The question is this:
Must Article 8(1) ... be interpreted as meaning that it is in the context of proceedings concerning an infringement of an intellectual property right if, after the definitive termination of proceedings in which it was declared that an intellectual property right was infringed, the applicant in separate proceedings seeks information on the origin and distribution networks of the goods or services by which that intellectual property right is infringed (for example, for the purpose of being able to quantify the damage precisely and subsequently seek compensation for it)?
This Kat has no idea what the underlying dispute is about, but is always willing to hear from readers who know.  If you want to tell the UK government what to think, can you please email the UK Intellectual Property Office here by close of play tomorrow?

TIPLO dinner. "The Ten Commandments of IP Dispute Resolution" is the title of a forthcoming dinner event organised by The Intellectual Property Organisation (TIPLO) on Tuesday 20 October in the Old Court Room, Lincoln’s Inn. IPKat blogmeister Jeremy is speaking and Clyde & Co's David Wilkinson is in the chair. The theme runs like this:
In recent times there has been a proliferation of increasingly user-friendly and affordable IP courts and alternative dispute resolution services, to cope with the rising tide of IP disputes.

Can we cope with the wave of disputes as it rises to Biblical proportions - or do we need a new set of Ten Commandments to help us reach the Promised Land of the Overriding Objective?
If you want to join the fun, just click here for further details.


Anonymous said...

I'm very interested in any other comments from readers about the Gleissner cancellation actions. One of my client's has been attacked. It is a registered charity and a simple on-line search would have revealed that the mark is in use. It is putting my client to considerable time, trouble & expense to prepare the evidence & I am at a loss to know what Gleissner is up to.

IPL said...

A client of ours has also been targeted by a company held by Mr Gleissner, albeit in relation to a Benelux trade mark.

Perhaps the man has suffered some kind of head injury:

Anonymous said...

Can anyone imagine a CTM troll sending out settlement offers for a sum below normal and usual attorney costs, but well above the cancellation costs?

Anonymous said...

Mr. Gleissner has also been filing CTM revocation actions via the company Trademarkers NV, of which he is a shareholder (together with his company Fashion One).

Bystander said... leads to a holding page stating "A new project is coming to you. Revolutionizing Social Media." That seems consistent with the goods and services of the opposed AFM trade mark.

There is also a link to "It's showtime, This content will soon be available" on the Fashion One website.

Google reveals (possibly not impartial) snippets about a previous trade mark dispute between Fashion TV and Michael Gleissner's Fashion One.

Anonymous said...

Perhaps he has taken umbrage at the profession in view of his own mark being opposed?


Sally Cooper said...

But is it just Gleissner ? A former client has interests in "VTP" - and pubic record shows attack by way of cancellation pr oceedings not only against their two (word and logo) UK Registrations but also on EU Registrations of others for VTP with the aggressor being CKL of The Netherlands .......

Anonymous said...

This situation derives from the system gap of the absence of a legitimate interest in registering a trade mark or to apply for cancelation.
A trade mark system not based on legitimate interest generates futile exclusive rights and especulative legal positions. The 5 years grace period or of non serious use are provisions that do not prevent this kind of situations.

Aaron Wood said...

The question is whether an injunction can be obtained to stop him doing this...

Moron in a Hurry said...

Damn and blast it! That was my big idea. I have always thought that a systematic programme of threatening revocation (plus a without-prejudice offer of settlement to avoid the very real administrative and legal costs of dealing with such actions) would have been an excellent way of making a lot of money for my retirement! It can't really go wrong: get just one or two items in the specification revoked and you get all your expenditure back, plus extra for your trouble. Any properly-advised party receiving my letter-before-action would realise the same and settle without waiting for me to start proceedings. So lots of money in return for at most the price of a postage stamp.

Everyone who has a valuable registration, but with a long "class heading" specification, was going to be my target. But in particular, anyone with protection for "gutta-percha" in class 17. I still don't know what that stuff is, nor no doubt do 99.9% of owners with legal protection for it. But of course, there is no need to particularise precisely what I wanted off the register: the burden of proving use falls entirely on the proprietor.

Anonymous said...

CKL Holdings is owned by that Michael as well guys :))

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