4 Sep 2017

Auntie Jane's Trade Mark Tips: No 8 - Oppositions in the Trade Mark Registry

Intellectual Property Office in Newport













Jane Lambert

In my last trade mark tip, I talked about publication and some of the consequences. In most cases, there are no consequences at all. Your application is published in the Trade Marks Journal and nobody bats an eyelid. If there are no objections the application proceeds to registration as the infographic indicates. But sometimes the Intellectual Property Office receives third party observations which the examiner considers and or even an opposition.

An "opposition" is an application to the Intellectual Property Office to stop the registration of the sign that you want to register as a trade mark. It can be made on any or all of the absolute grounds for refusal mentioned in my sixth trade mark tip and/or the grounds that the objector has an earlier trade mark or an earlier right under s.5 of the Trade Marks Act 1994. An "earlier trade mark" is a trade mark that has been registered for the UK or the EU, an international mark, an application for any of those marks, or a mark that is protected as a well-known mark under the Paris Convention. An "earlier right" is the right to bring an action for passing off, copyright or any other IP right infringement or some other claim that would prevent your using the trade mark. These are known as "relative grounds for refusal".

Your first inkling that you may have a problem could be a letter from the patent or trade mark attorneys or solicitors for the objector setting out the objection and the reasons for it and inviting you to withdraw your trade mark application.  Sometimes it is accompanied by a form TM7A or notice of threatened opposition. This is one of the times when you may need legal advice either from a barrister or solicitor specializing in IP law or a trade mark or patent attorney.

If you decide to proceed with your application, the objector may issue opposition proceedings which he or she does by filling in a form TM7 or a TM7F. The objector (who has now become an "opponent") will fill in a TM7F if he or she wants a fast track opposition. Fast track proceedings are available where the opposition is based on s.5 (1) or (2) of the Trade Marks Act 1994 and the application to register the earlier mark was made less than 5 years ago. The main advantage is that costs awards are limited to £500 but the disadvantage is that there is not usually a hearing. In all other cases, opposition proceedings are to be launched with a form TM7.  If you want to defend your application you must file a notice of defence and counterstatement in form TM8 within 2 months of the service of form TM7.

I described what happens next in some detail in Oppositions in the IPO's Trade Marks Registry on 12 Aug 2015 in NIPC London. Basically, the case goes before a hearing officer who may give a preliminary indication as to how he thinks the case will go. If the case proceeds, the hearing officer will direct the parties to file evidence. If you are unable to resolve your dispute opposition through direct negotiation or perhaps mediation the hearing officer may decide the case on the written materials only or order a hearing if you or the opponent so wishes. That will usually take place at the Intellectual Property Office in Newport with one or both of the parties sitting in London or occasionally elsewhere. It tends to follow the usual course of civil proceedings with the opponent opening and closing and the applicant responding. Judgment is usually reserved for several weeks and is delivered in writing. An unsuccessful party may appeal either to a tribunal within the IPO known as "the appointed person" or to the Chancery Division of the High Court.

If the opposition fails either before the hearing officer or on appeal the trade mark application to register the trade mark proceeds to grant. If it succeeds the application is stopped in its tracks.

That is quite enough for one day. If you want to discuss this tip or trade marks generally, call me on +44 (0)20 7404 5252 or send me a message through my contact form.

27 Jul 2017

Auntie Jane's Trade Mark Tips: No. 7 - Some more Things that can go wrong

Author JulieB2768
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Jane Lambert

Since my last trade mark tip on 15 June 2017, the IPO has published a timeline of the Process for applying to register a trade mark.  It's a really useful graphic which does a lot of my work for me,

We are now at stage 6 - "Publication."

If you go back to the timeline you will see a note in brackets.  If the examiner has no objections your application will be published in the trade mark journal for 2 months which can be extended to 3 during which time anybody can make "third party observations."

That is true but not the note is incomplete in several important respects which will become apparent if you click the number 6 or the accompanying note on the graphic.  The graphic links to a page entitled "Check the Trade Marks Journal".

For most people, the Trade Marks Journal is about as interesting as the telephone directory and equally impenetrable but it will be examined avidly by businesses called "watch services" whose job is to spot applications for trade marks that might possibly conflict with another mark. It may also be read by your competitors who fear you may be up to something but don't yet know what and possibly by busybodies with more time on their hands than is good for them. They are the ones who could delay or even defeat your trade mark application and they will certainly waste your time and cost you money, Ugh!

If you instructed a patent or trade mark attorney to make your application on your behalf there is a good chance that most of the busybodies and maybe some of your competitors will back off because they know that your attorney will respond if they make an objection. But if they think you are on your own they may make a "third party observation" or even launch an "opposition."

Now oppositions are something you really have to worry about because they go before a hearing officer whom you may remember from my last tip.  In that article, I said that hearing officers decide disputes between applicants for trade marks and examiners. These are called "ex parte" hearings because they are between you and the examiner. Hearings between you and people who don't want you to get or keep a trade mark are called "inter partes" which literally means "between other parties". "Inter partes" proceedings are much more like trials in the civil courts than "ex parte" hearings. Parties are represented by barristers, solicitors or attorneys and the loser has to pay the winner some costs.  As Mr Trump might tweet if he is a few letters short of 140, "bad news" or even "very bad news".

Much less worrisome are "third party observations" which are made under s.38 (3) of the Trade Marks Act 1994:
"Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations."
The next paragraph adds:
 "A person who makes observations does not thereby become a party to the proceedings on the application."
If you click the link "object to a trade mark application" link on the "Check the Trade Marks Journal" page, you will be taken to a page headed "Objecting to other peoples trade marks and the legal costs" You will find that most of that page is on oppositions but there are the following lines on third party observations:
"At any point after we have accepted and published an application for registration, and before it is actually registered, anyone can make what we call ‘third party observations’.
You can tell us if you think that we accepted the application in error. You must bring to our attention any relevant facts of which we may not have been aware at the time we accepted the application.
Making a third party observation is not a formal legal action, and we are not bound to act on them. We may rely on evidence given in an observation to support any later objection to the application.
There are several ways to file third party observations with us."
I wouldn;t bother clicking the link under "file" because it is mainly about patents. Basically, you can send your observations by post, fax, email or traipse down to Newport and hand them over to reception. If you do go to Newport you might like to check out what's at the Riverfront Theatre where you might see Ballet Cymru if you are very lucky and the excavations and museum at Caerleon (see Tip #2).

Well, that's all for now folks. Next tip will be about Oppositions.

Meanwhile. third party observations put me in mind of Alexander Pope:
"Damn with faint praise, assent with civil leer,
And without sneering, teach the rest to sneer;
Willing to wound, and yet afraid to strike,
Just hint a fault, and hesitate dislike;
Alike reserv'd to blame, or to commend,
A tim'rous foe, and a suspicious friend."

15 Jun 2017

Auntie Jane's Trade Mark Tips: No. 6 - Some of the Things that can go wrong

Author Priwo
Source Wikipedia






















Jane Lambert

There are all sorts of reasons why your application to register a mark might fail.

The official who examines your application ("the examiner") may consider that your mark falls within a number of statutory exclusions. For a start, the examiner may consider that the subject matter of your application is not even a trade mark, possibly because it is not a sign, or perhaps because it can't be expressed in writing or doesn't distinguish your goods and services from those of your competitors.

Even if it is a trade mark, the examiner may object to it on the grounds that it is not distinctive, that it is descriptive of the goods or services, or common to the trade. He or she may consider your proposed mark to be offensive or it may be too similar to a royal, national or other protected emblem. Those objections are called "absolute grounds for refusal" and are set out in sections 3 and 4 of the Trade Marks Act 1994.

Wherever possible, the examiner will give you an opportunity to overcome the objections. If you fail to take advantage of that opportunity or if the examiner believes that the objection cannot be overcome he or she may refuse your application.

If you think the examiner is wrong you can appeal against his decision to the Registrar of Trade Marks (that is to say the Comptroller or Chief Executive of the IPO). The Registrar will appoint an official called "a hearing officer" to consider your appeal. I have described the appeal procedure in "If the examiner says "no" - ex parte hearings in the Trade Marks Registry" 10 Aug 2015 NIPC London. That is where I or some other specialist intellectual property barrister can often help. We can advise you of your chances of success and, if necessary, represent you at the hearing before the hearing officer.

Even if the examiner has no objection to your application or you manage to overcome any objection that he or she raises, you may not be out of the woods. Someone else may object to your application and I will consider that problem next time.

Until then, I leave you with my case note on T-397/09 Prinz von Hannover v OHIM  [2011] EUECJ T-397/09  (Trade Marks: Prince Ernst August of Hanover and Brunswick etc v OHIM 6 June 2011 NIPC Law). Cheeky wasn't he!

Enjoy the lovely weather folks.

13 Jun 2017

Auntie Jane's Trade Mark Tips: No. 5 - How do I register a Trade Mark?

Jane Lambert













Probably the best advice I can give to an entrepreneur or some other business owner who wants to register a trade mark is:  consult a trade mark attorney.  In  Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 I advised that it is possible to apply for a trade mark without an attorney, that it has been done many times before and that unrepresented applicants can expect a certain amount of practical help from the Intellectual Property Office ("IPO") but I would not recommend it. I cautioned that it is a lot of trouble to save a few hundred pounds and it could result in a lot of extra expense as there are many pitfalls in the process.

In that article, I directed readers to the "Find an Expert" section of the Chartered Institute of Trade Mark Attorneys' website or suggested that they might attend an IP clinic or even have a word with me. The fee that any of them would charge for taking your instructions, ascertaining your needs and preparing your application would be chickenfeed compared to the cost of your time in learning how to do all that for yourself. If you try to do it yourself there is a much higher risk of something going wrong. And in the very unlikely case that an attorney gets it badly wrong, he or she is regulated and insured against professional negligence whereas you are not.

For those who chose not to take my advice, I gave a number of tips. They are worth reading again even if you do instruct your attorney because you will find it easier to instruct your attorney and the attorney will find it easier to advise you if you know what is going on.  If you want to register an EU trade mark you should also read the EU Trade Mark fact sheet published by the IPR Helpdesk.

Your application to register a mark does not mean that it will be accepted. In tomorrow's tip, I will consider some of the things that could possibly go wrong. Theresa May will tell you all about that.

12 Jun 2017

Auntie Jane's Trade Mark Tips: No. 4 - "What is a Trade Mark?"

The Beehive Pub Sign in Grantham
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Jane Lambert

Lots of things can be trade marks.

S.1 (1) of our Trade Marks Act 1994 defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings" and includes within the definition "words (including personal names), designs, letters, numerals or the shape of goods or their packaging".

Hannah Roberts mentioned some of the more unusual trade mark applications and registrations in her article "11 of the most unusual company and celebrity trademark applications and disputes" 31 Dec 2016 Business Insider UK.

The requirement of graphical representation (that is to say, that the sign can be written down in letters or figures) did present a problem when it came to smells because nobody could figure out how to express a perfume or other aroma in writing. However, that may change soon as the requirement for graphical representation will be replaced by a requirement that a mark must be
"represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor"
(see Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks).

Here's a question to ponder. Could a pub sign be a trade mark?  And if so, could the sign for The Beehive pub in Grantham which consists of a hive of been fall within the definition?  I discussed the issue in What has intellectual property got to do with Grantham? 4 Sept 2014 NIPC East Midlands. Do you agree?

Grantham, incidentally, is a very beautiful market town not far from the A1 and on the railway line London and  Scotland, the North East and Yorkshire. It is famous for its parish church, its grammar school where Sir Isaac Newton was a student, for the birthplace of our first and, so far, only successful woman prime minister, Gravity Fields (its biennial arts and science festival) and the magnificent Chantry Dance Company and Chantry School of Contemporary and Balletic Arts.

10 Jun 2017

Auntie Jane's Trade Mark Tips: No. 3 - Where to find the Law

Wildy's Book Shop
Photo Elisa Rolle
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Source  Wikipedia
























Jane Lambert

Obviously, you find law in a law book and you find law books at a legal bookseller.  And here's a picture of one that is nearly 200 years old. Wildy & Sons positioned strategically between the Royal Courts of Justice and the barristers and other legal professionals of Lincoln's Inn is one of the sights of London. It is almost next door to The Seven Stars, one of the best and oldest pubs in London.

But I digress.  This is what you could ask for were you ever to visit Wildy's.

In Auntie Jane's Trade Mark Tips No 2, I told you about Briitish trade marks which protect brands in the UK only and EU trade marks which protect them throughout the whole of the European Union including the UK.

The law that governs British trade marks is the Trade Marks Act 1994. That Act has been amended several times since it was first enacted and you can find a convenient though unofficial consolidation on the IPO website at Unofficial Consolidated versionTrade Mark Act 1994 as amended.  The Act allows ministers to make rules for the operation of the Act which you will find in Consolidated Trade Mark Rules on the same website.  Our Act was passed to give effect to the Trade Mark Directive (Directive 2008/95/EC) which is the ultimate source of our trade mark legislation.

The law that governs EU trade marks is Council Regulation (EC) No 207/2009 of 26 Feb 2009 ("the EU Trade Mark Regulation"). If you compare the Regulation with the Directive you will find many similarities. That is not surprising because both sets of legislation were made by the European Council and both need to comply with international agreements such as the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS").

From time to time disputes arise as to the meaning and effect of the above legislation which sometimes go to court. The ultimate authority, while we remain in the EU, is the Court of Justice of the European Union and the General Court but important decisions are also made by our Supreme Court, the Senior Courts of England and Wales, their equivalents in Scotland and Northern Ireland and IPO hearing officers.  You will find most of the relevant decisions on the British and Irish Legal Information Institute ("BAILII") website.

That's all folks. Have a good weekend.

9 Jun 2017

Auntie Jane's Trade Mark Tips: No. 2 - EU and British Trade Marks

Jane Lambert


















For so long as the United Kingdom remains a member of the European Union ("EU") businesses can protect their brand in the UK by applying to:
The conditions for obtaining an EU trade mark are very similar to those for obtaining a British trade mark. So, too, are the rights granted upon registration. It is rather more expensive to obtain an EU registration than a British one but then your mark is protected in 27 more countries.

There will be a problem with EU marks after we leave the EU in that EU marks will continue to apply to the 27 remaining member states but not to the UK. The outgoing government has proposed to pass a Great Repeal Bill which would have preserved the rights of EU trade mark owners in the UK immediately after our withdrawal from the EU. 

The EUIPO is located in Alicante in Spain which seems a very nice place:


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The IPO is in Newport in South Wales.  Maybe not quite so glamorous but jolly nice all the same.


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If you want to discuss this article, give me a ring on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

8 Jun 2017

Auntie Jane's Trade Mark Tips: No. 1 - The Very Basics

Jane Lambert














If you really were born yesterday and you are not just wet behind the ears but positively soaking, you may find these animations helpful.

The first is called "Trademarks" and was published by the World Intellectual Property Organization ("the WIPO"), the specialist agency of the United Nations responsible for intellectual property, and Indecopi of Peru, with funding from South Korea.  It is about trade mark law generally and is not country specific.

By the way, we usually spell "trade mark" as two separate words in the United Kingdom and most other Commonwealth countries contrary to what the spell checks try to tell you.  Americans combine "trade" and "mark" into just one word.


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I hope you enjoyed that film.  Another that you may like, which is also published by the WIPO with South Korean help, is "Porro and his Friends create a Trade Mark".

Now, here is an animation from our very own Intellectual Property Office ("IPO") in Newport called "IP Basics: Should I get a Trade Mark?" The IPO's video summarizes the law here.



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You should be ready for my articles, "Brands" and "Trade Marks" as well as the IPO's guidance "Apply to register a Trade Mark".

If you have made it this far, you deserve a treat.  Ballet Cymru is another famous institution based in Newport.  Click this link to see those beautiful young dancers perform TIR to the mellifluous voice of Cerys Matthews.

If you have any questions about this post, call me on 020 7404 5252 during office hours or send me a message through my contact form.

1 Jun 2017

What to do if you find a knock off on your competitor's stand at an exhibition

Manchester Central Convention Complex
Photo Stephen Richards
Creative Commons Attribution-Share Alike 2.0 Generic Licence
Source Wikipedia






















Jane Lambert

The European IPR Helpdesk has just published two fact sheets on intellectual property and trade fairs which I discussed this morning in Resolving IPDisputess at Trade Fairs in NIPC Law. The reason the Helpdesk published those fact sheets is that a lot of disputes occur at trade fairs. That is because new products are often unveiled at trade fairs and IP owners get an idea opportunity to examine them.

English law provides a full range of remedies for IP infringement including interim and pre-action injunctions but, as I said in Resolving IPDisputess at Trade Fairs,  they are expensive to obtain and come with onerous conditions. It would be unwise for a small business to seek such relief unless it has a sound case in law and is properly funded.  If you intend to exhibit at an international trade show here are the steps that I would advise you to take first.

Tip #1   Ensure optimum legal protection for your intellectual assets 

Make sure that you have appropriate legal protection for your brands, products and business in each of the markets in which you intend to operate including the country in which you the trade show is to take place.  This should be part of your IP strategy and integrated into your long term business plan.

Tip #2    Make sure you have the funding for any enforcement proceedings you want to take and any revocation or invalidity proceedings others may bring against you.

Except for proceedings in the Intellectual Property Enterprise Court ("IPEC") small claims track IP litigation will cost you money. There's a limit to how much you can be made to pay the other side in IPEC but no limit at all to the amount you have to pay your own solicitor and counsel. In the rest of the Chancery Division and County Court, the only limit to your potential liability is what the costs or applications judge decides. That can run into the hundreds of thousands or even millions.

For small most companies, the best solution is before-the-event insurance. I have written a lot of articles on the topic the latest of which is IP Insurance: CIPA's Paper 1 May 2016 NIPC Inventors Club. I recommend your reading the IPO's Intellectual property insurance guidance of 24 March 2017. You will find a list of specialist brokers on the Chartered Institute of Patent Attorneys' website.

Tip #3 Don't lose your temper

Even though you may have spent a shedload of money on R & D and marketing only to find the spitting image of your flagship product on your competitor's stand you must be very careful what you say to the other side. English intellectual property statutes provide an anomalous cause of action called a "threats action".  If you threaten to sue for patent, trade mark, registered design and unregistered design right infringement in the UK and you can't make good that threat any person aggrieved by those threats (who may not necessarily be the person to whom your threats were made) can sue you under s.70 of the Patents Act 1977, s.21 of the Trade Marks Act 1994, s.26 of the Registered Designs Act 1949 and s.253 of the Copyright, Designs and Patents Act 1988 for declarations, injunctions and damages. The law is about to be reformed by the Intellectual Property (Unjustified Threats) Act 2017 which I discussed in The Intellectual Property (Unjustified Threats) Bill 24 Apr 2017 NIPC Law, but it is not in force yet.

Tip #4  Collect the Evidence

Your best bet is to keep stum and pick up any brochures, data sheets and other documentation that may be around. Ask for technical and sales information on the product and whether you can take any pictures. As soon as you have got all that you can get, send all that documentation to your IP adviser and ask for an urgent appointment with him or her.

Tip #5   Take Appropriate Action

After reading your documentation, your IP adviser should set out your options which will range from a without notice application for an injunction to remove the infringing goods from display to an action in the IPEC small claims track or indeed doing nothing and the likely risks and costs. You should plan litigation very much as you plan any other business operation with clear aims, budgetary controls and milestones.

Should you wish to discuss anything in this article, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

31 May 2017

Can I apply for a Trade Mark by myself or must I instruct an Attorney?

Jane Lambert
























The answer is "yes".  You can apply for a trade mark without an attorney. It has been done many times before.  You will get a certain amount of practical help (though no legal advice) from the Intellectual Property Office ("IPO").  But I would not recommend it. It's a lot of trouble to save yourself a few hundred pounds and it could land you in a lot of extra expense as there are lots of pitfalls in the process.

Why you should instruct an Attorney
It takes time to qualify as a trade mark attorney.  Trainee trade mark attorneys learn about the sort of marks that are registrable and those that are not.  Attorneys know what to look out for on a trade mark search. They know how to draft your specification in a way that is wide enough to cover every business activity you are likely to undertake but not so broad that it leads to an objection. If, for any reason, there is an objection to your application an experienced attorney stands a very good chance of resolving it quickly and inexpensively.

Where to find an Attorney
If you do not already instruct a trade mark attorney here are some possible ways of finding one.  You can consult the Chartered Institute of Trade Mark Attorneys' website. There is a link to a searchable database of all the attorneys in the country.  If you want a personal recommendation, I can introduce you to attorneys with whom I have worked successfully in the past.  You could also attend one of the IP clinics that the Chartered Institute of Patent Attorneys run in conjunction with Business and IP Centres and PatLib libraries around the country.

What to do if you decide not to take my Recommendation
If, despite my recommendation, you decide not to instruct a trade mark attorney:

Tip #1 Read the IPO guidance very carefully.
The IPO has published the following useful guides:
Make sure you understand everything in those documents before you do anything,

Tip #2: Carry out a thorough trade mark search
You can search the IPO, EUIPO  and ROMARIN databases yourself or you can ask the patent librarian at Leeds Business and IP Centre or certain other PatLib libraries to make a search for you for a small fee.

Tip #3: Make sure that your application covers all relevant goods and services 
You register a mark in respect of specified goods or services. Make sure that the goods and services in respect of which you register your mark cover not just simply the goods and services that you are supplying now but all those that you plan to supply at any time over the next 5 years.

Tip #4: If there is an objection to your application take professional advice at once
If the examiner says that your mark is unregistrable because it falls within one or more of the absolute grounds for refusal provided by sections 3 and 4 of the Trade Marks Act 1994 or if a third party objects on the grounds that your proposed registration is too close to his or her mark then your application is in trouble. Sometimes such objections can be resolved by negotiation. If not they may go to a hearing before an official known as a "hearing officer". Should that happen the costs will escalate sharply.

Tip #5: Consider IP insurance
IP litigation can be ruinously expensive, especially for small and medium enterprises.  You can insure against those costs by taking out specialist IP insurance before a dispute actually arises.

Tip #6:  Engage a Watch Service
A watch service looks out for applications that are similar to yours so that you can object to a third party's application and try to hammer out an agreement at an early stage. Leeds Business and IP Library offers a very cost-effective one. Several trade mark attorneys and other commercial organizations also offer watch services.

If you are still considering whether or not to register a trade mark or if you have applied to register a trade mark and hit any of those problems, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.