tag:blogger.com,1999:blog-5574479.post2407398819347932250..comments2024-03-28T09:05:22.006+00:00Comments on The IPKat: Unpaid costs: what's your preference?Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-5574479.post-24599906224578242552016-03-16T10:12:57.676+00:002016-03-16T10:12:57.676+00:00The IPO list of unpaid costs has been moved to:
ht...The IPO list of unpaid costs has been moved to:<br />https://www.gov.uk/government/publications/trade-mark-disputes-unpaid-costs-orders/unpaid-costs-orders-case-details Lewis Handsnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-64033196977374910882011-08-19T12:36:35.627+01:002011-08-19T12:36:35.627+01:00This is a tricky issue but one which my experience...This is a tricky issue but one which my experience in the debt collection department of Walker Morris solicitors has given me an advantage for clients in IP and made it commercially viable to pursue even €300 awards.<br /><br />Legal Basis<br /><br />Pursuant to Article 85 of the Council Regulation (EC) 207/2009 (the Community Trade Marks Regulation), the OHIM has general powers to make orders for costs. Pursuant to Article 86, an order made by the OHIM shall be enforceable once the decision is verified as being authentic by a national court.<br /><br />An order of the OHIM is directly enforceable in the European Union as an uncontested claim pursuant to Council Regulation (EC) 805/2004 (the European Enforcement Order Regulation). Article 6 entitles an applicant to a European Enforcement Order provided, inter alia:<br /><br />• that the original order is enforceable;<br />• that the debtor is aware of the original order; and <br />• there is no conflict with the rules on jurisdiction.<br /><br />A statement made in a solicitors' letter certifying this belief is sufficient.<br /><br />Method<br />A European Enforcement Order can be obtained by sending to the County Court:<br />• form N219 Application for Enforcement Order Certificate;<br />• a draft European Enforcement Order Certificate;<br />• a copy of the OHIM decision;<br />• copies of correspondence with the Defendant's representative; and<br />• the court fee of £35.<br /><br />The resulting EEO is then directly enforceable by any European Union enforcement body. However, this will rely on domestic procedures where the assets are based, which is where the real barrier to enforcement lies.<br /><br />In England and Wales, an alternative is to seek to enforce over UK or Community trade marks by way of charging order pursuant to the Charging Order Act 1979 (as a beneficial asset held under trust). The costs of a charging order are recoverable i.e. £100 court fee, £110 fixed solicitors' costs and the cost to register at UKIPO or OHIM. The threat is usually sufficient to elicit payment however. :-)<br /><br />RobRobert Cumminghttps://www.blogger.com/profile/03246262303203506715noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-69603084937073519472011-08-19T11:11:17.313+01:002011-08-19T11:11:17.313+01:00It doesn't look too complicated to enforce in ...It doesn't look too complicated to enforce in the UK - mostly administrative. Firstly apply to the IPO under <a href="http://oami.europa.eu/en/office/aspects/communications/08-98.htm" rel="nofollow">delegated powers from the Secretary of State</a>. Then <a href="http://www.justice.gov.uk/guidance/courts-and-tribunals/courts/procedure-rules/civil/contents/parts/part74.htm#IDAJBVIC" rel="nofollow">apply to register that at the High Court</a>. Then enforce as you normally would (presumably the costs of encforcement being recoverable if the debtor has any money). Surely it should be possible to at least recover something of a EUR1600 award, or at least spoil the debtor's day?David Harrisnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-15666013358994338062011-08-19T10:48:22.880+01:002011-08-19T10:48:22.880+01:00We constantly face this issues and I keep returnin...We constantly face this issues and I keep returning to a rather simple answer to the problem - In addition to the Opposition fee, OHIM should take and hold the maximum award of costs payable by the Opponent as security for costs. If the applicant elects to defend the Opposition then they must provide Ohim with security for costs prior to the end of the Cooling Off period. Failure to do so by either party should result in a successful outcome for the other party.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26256162008516700932011-08-19T10:36:31.353+01:002011-08-19T10:36:31.353+01:00I would be tempted go with the unenforceability of...I would be tempted go with the unenforceability of own IP idea, but this raises the question of what IP and where. Should your UK IP be affected by an unpaid cost award in Burkina Faso?<br /><br />A simpler approach might be to make the validity of an opposition or an application filed at a given body conditional upon settlement of any outstanding cost awards made by that body within, say, a month of filing the opposition or application.<br /><br />Why shouldn't patent and trade mark offices operate a "clean hands" approach, and only respect parties who respect the awards made by that office?Meldrewhttps://www.blogger.com/profile/09841440718012449720noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-91895907571906856872011-08-19T10:32:38.908+01:002011-08-19T10:32:38.908+01:00As to the comment re Art 104(3), more or less the ...As to the comment re Art 104(3), more or less the same is provided in Art 82 CTMR and Art 71 RCD, but these are modelled on what is now Art 299 of the Treaty on the Functioning of the European Union (TFEU) rather than on the EPC.David Muskerhttps://www.blogger.com/profile/01412529027408896735noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5079898894475649972011-08-19T10:13:24.781+01:002011-08-19T10:13:24.781+01:00I have never tried this, but the answer as regards...I have never tried this, but the answer as regards the relevant enforcement authority for the UK would appear to be the Registry rather than the Court - see Communication No 8/98 29 September 1998 on the competent authority referred to in Article 82(2) CTMR in the United Kingdom, http://oami.europa.eu/en/office/aspects/communications/08-98.htm<br />I am not aware of anything more recent than that, and it is still listed in the OHIM National Law booklet at<br />http://oami.europa.eu/en/office/diff/pdf/National_law.pdfDavid Muskerhttps://www.blogger.com/profile/01412529027408896735noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-77800015209277844982011-08-19T09:59:15.002+01:002011-08-19T09:59:15.002+01:00why can't the debt just be sold on to a collec...why can't the debt just be sold on to a collection agency in the relevant territory?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-77898769965636644522011-08-19T00:02:18.189+01:002011-08-19T00:02:18.189+01:00I'm puzzled. OHIM seems to have taken over muc...I'm puzzled. OHIM seems to have taken over much procedural know-how from the EPO, and I would have expected for them to have a device similar to <a href="http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/ar104.html" rel="nofollow">Article 104(3) EPC</a>, which reads:<br /><br /><i>104(3) Any final decision of the European Patent Office fixing the amount of costs shall be dealt with, for the purpose of enforcement in the Contracting States, in the same way as a final decision given by a civil court of the State in which enforcement is to take place. Verification of such decision shall be limited to its authenticity.</i><br /><br />With that you'd only need to open the Yellow Pages at "B", let your finger walk and flip all the way to "bailiff", and choose the most appealing ad. Having these, er, thugs, showing up at the deadbeat's premises must be an even more humiliating experience than being listed on some meek wall of shame.<br /><br />Or am I perhaps missing something? I never had to collect money that way, so I don't know how it goes in practice. I can only imagine the puzzled look on the bailiff's face when dealing for the first time ever with a claim based on patent law rather than collecting unpaid parking tickets or rents.<br /><br />I would however interpret the expression "final decision" in Art. 104 as excluding decisions by the OD which were not confirmed by the BoA in appeal. Correct?Roufousse T. Fairflynoreply@blogger.com