Notification, not examination: the next step; Golden opportunity

Notification, not examination: the next step

Now that it has decided to scrap the examination of trade marks on relative grounds (see the IPKat's earlier post here), the UK Patent Office wants to hear from businesses about the legal regime that will bring this about. Under the new regime, the Patent Office is moving to a notification system under which both the trade mark applicant and the owner of any earlier possibly conflicting marks will be told of each other's existence. The consultation document can be accessed here and you have till 12 March 2007 to make your comments.

Right: Small and Medium-Sized Enterprises (SMEs), as viewed by the UK government

The IPKat says, it's nice of the Patent Office to seek the view of businesses - which is all very politically correct in terms of being nice to small furry SMEs and all that. But it's really the opinion of their specialist legal representatives that's going to count, since it is they who will be manipulating the system on behalf of the small furry SMEs that everyone wants to be nice to.

Left: Small/Medium-Sized Enterprise as viewed by another SME that's competing with it

Merpel agrees and adds, "I can't wait to see what happens when the first action is brought against the Patent Office for failing to notify an earlier mark which it didn't consider relevant but which a competitor (or a court that agrees with him) did".

Golden opportunity

The IPKat's friend Laurence Kaye (Laurence Kaye, Solicitors) informs him of a position available for the right Paralegal or Legal Assistant. It's a golden opportunity to work - for pay at the market rate - for one of UK’s leading lawyers in the media/online/e-commerce field (check out the firm's website for legal focus, clients, ethos etc). The firm is based in leafy Radlett, Herts, with opportunities for remote and home-based work.

Above, right: payment on the usual scale ...; below, left: Radlett's busy commercial hub

The principal duties are (i) legal research, (ii) contract drafting and reviewing, (iii) research and writing of the firm's newsletter and (iv) attending and preparing notes of meetings. To do this you need (i) excellent written and oral skills, (ii) knowledge of IP law, (iii) IT skills (Word, Powerpoint and, ideally, Excel) plus internet literacy and (iv) attention to detail.

If you're interested, email Laurie with your CV and a covering letter of application to explain your interest in the role and what you would like to gain from it. Deadline: 26 January 2007.
Notification, not examination: the next step; Golden opportunity Notification, not examination: the next step; Golden opportunity Reviewed by Jeremy on Wednesday, December 20, 2006 Rating: 5


  1. Sometimes Merpel I think you have an evil streak. Re any action against the Patent Office (soon to be renamed of course) for non-notification: have you not heard of our immunity (section 70 of the TM Act)?

    No doubt you'll tell me the circumstances when a statutory immunity cannot be relied on.

  2. Dear Anonymous, you're right: (i) I do have an evil streak and (ii) I'll tell you that the statutory immunity cannot be relied on.

    The immunity under s.70 is conferred in respect of "any liability by reason of, or in connection with, any
    examination required or authorised by this Act, or any such treaty, convention, arrangement or
    engagement, or any report or other proceedings consequent on such examination". If there is no examination in respect of relative grounds, surely there is no examination in respect of which an immunity can be claimed?

  3. Merpel I expected more from you. I thought you would cite some eg Human Rights case where an immunity didn't hold.

    Instead, you rely on an overly narrow definition of 'examination'. In fact, we will still 'examine' of course under the new regime (by searching for earlier marks and notifying), but not refusing.

  4. Come now, Anonymous, you can hardly complain that a lawyer is acting like a lawyer. Notification might be 'examining' by your colloquial notion, but it's not examination within the meaning of the Trade Marks Act 1994.

    Under Section 37(1) "The registrar shall examine whether an application for registration of a trade mark
    satisfies the requirement of this Act (including any requirements imposed by rules)". The requirement is that the applied-for sign be a "trade mark" within the meaning of section 1(1).

    If this argument fails, I reserve the right to plead the Human Rights Act 1998 ...


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.