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Last month I wrote about a wrinkle of patent law & procedure which meant that – sometimes – it was best not to use our services but just to keep the idea secret instead. This month, I have a tale to tell about a recent trade mark matter which proved that you absolutely should use our help.
Trade mark filing is really easy now. The UK and European Registries both have friendly websites with easy-to-follow links to a form that you can fill out and submit, make a quick card payment, and the application is in place. They send you a letter listing any earlier marks that they found, but they don’t make a fuss about them and still publish your application. If none of the earlier owners object then you’re granted a registration. All very easy and everything’s fine, right?
Ummm, no. There’s a lot going on here. The UK Registry used to object if it found an earlier mark on the Register that looked like it conflicted with your application. You then had a couple of options – persuade the examiner that there wasn’t actually a conflict, or reach an agreement with the earlier owner, or have the earlier mark removed if it was invalid for some reason. Or give up, of course. That system will be familiar to my readers in the USA, Australia, Canada, and the many other countries that are sensible enough to still operate this system.
It worked well until 1996, when the EU Registry opened. Faced with the prospect of examining against prior marks in 28 different countries in 24 different languages, all with their own meanings and pronunciations, the EU decided that the best option was to not bother - and only examine so-called “relative rights” if the earlier owner raised an opposition. This is why the opposition rate in the EU Registry is about 10% instead of the 1% or so that prevailed in the UK Registry prior to 1996.
Of course, that meant the UK Register began to fill with EU-originating registrations that hadn’t been examined, and by 2007 this was becoming painfully obvious. So the UK Registry decided to give up too, and stopped examining for relative rights. Nowadays, a UK national application will go through even if it is for a mark which is identical in every respect to someone else’s unless the prior owner opposes it. This means our opposition rate is now also about 10%, and the burden is placed on the earlier owners to step up and object. For some of our clients, this is getting a little tiresome (and expensive). Many earlier owners don’t bother, or don’t realise, so it’s not uncommon to see a number of very similar marks on the Register.
We saw that in a recent matter that we handled. We had filed the application knowing that there were a few earlier similar marks, but they all had a degree of stylisation so we took the view that they seemed to be managing to co-exist. Hence our client’s (differently) stylised mark could surely squeeze in happily? Definitely worth trying...
Well, one of the earlier owners disagreed, raised an opposition, and threatened infringement proceedings if our mark was used in the UK. Their mark was quite different to ours, but they provided strong and cogent arguments as to why the two were similar enough to raise a likelihood of confusion. That probably wasn’t a great idea, though, because they weren’t the first to the mark. There was another earlier mark that we knew about, that they didn’t seem to have noticed. A little investigation showed that its owners had launched a business prior to Covid-19, achieved a bit of turnover, and had then given up and closed shop during the UK’s lockdown.
A brief enquiry in their direction confirmed that yes, they would indeed be very happy to accept a smallish but tidy sum in return for the registration, and within the few weeks that the Opponent had given us to consider their demands and respond, we managed to transfer that even-earlier registration to our client and record its transfer at the Registry.
My reply to the Opponent was possibly the most smug letter that I have written for a long time. It took all their arguments, agreed with them wholeheartedly, and explained how they showed the Opponent’s registration to be invalid and the Opponent’s use to be an infringement of my client’s newly-acquired registration. Their tone changed quite dramatically, and the matter has now been settled on terms that our client is very happy with.
I like this case, and not just because I was able to write a smug letter to one of my professional competitors. I genuinely feel that I made a difference here; having someone who knew their way around trade mark law, and who had searched the Register so that they could take a broad view, changed the outcome for my client completely (in their favour). The Opponent could have tidied up the Register and ensured that the mark was exclusively theirs, but they didn’t realise they needed to. The original system (of only allowing applications through if they seemed to be valid) would have caught this situation and forced the Opponent to sort things out in advance, but that no longer applies. Instead, the Opponent thought they had a broad and powerful registration - but found out too late that they did not.
So yes, you can file an application yourself easily. But if you want a registration that will defend your business in the way that you need, you might want to ask for our help.
As for the UK’s trade mark system, when we left the EU in 2021 I thought we’d change back to the original system and start examining applications again, but there’s no sign of that happening. It seems that it’s a bit too convenient for the Registry to have to do less for the same filing fee, and (I suspect) some of my professional colleagues in larger firms quite like the additional work entailed in all these Oppositions. Officially, the answer is that the current system allows people to obtain new registrations more quickly, with less effort, and with less cost - so that’s good, right? Well, surely not if they are invalid and can’t be relied on – as the other side found out in this case. For whatever reason, there doesn’t seem to be much support for a change amongst the people that understand what’s going on.
I’ve been arguing that we can and should revert to the pre-2007 system now that we are out of the EU. My view is that it properly balances the trade mark system and doesn’t place an undue burden on SME traders in defending their marks against all comers. I regard it as ridiculous that the Registry will happily accept and publish an application when the mark is clearly invalid. But I seem to be a lone voice. If you’re running a UK business and want to raise the matter then let me know and I’ll forward the contact details of the people to write to.
Best Wishes
Michael
