CIPA UK Trade Mark Training Manual - main text 2006 by CIPA Journal

Foundation-Level Training Manual

The UK Trade Marks Training Manual Author: Rebecca Chambers Editors: Keith Farwell and Richard Abnett

Jointly published by ITMA and CIPA

The UK Trade Marks Training Manual

Author: Rebecca Chambers Editors: Keith Farwell Richard Abnett

Acknowledgements

The author would like to thank

Richard Abnett (Reddie & Grose) and Keith Farwell (Phillips & Leigh) for editing this Manual Robert McDougall (Phillips & Leigh) for testing, and commenting on, the material Nicholas Pope, Chartered Institute of Patent Attorneys, for administration Dave Bradley, CIPA Publications Committee Thomson CompuMark for permission to use SAEGIS™ by Thomson CompuMark Sweet and Maxwell Limited

Rebecca Chambers asserts her moral rights in accordance with the Copyright, Designs and Patents Act 1988.

The UK Trade Marks Training Manual Contents Acknowledgements Introduction Red Module – Sources and Resources Ivory Module – Introduction to Internet Resources White Module – Reading and Referring to Case Law Yellow Module – Passing-off Khaki Module – Distinctiveness and Absolute Grounds Ultramarine Module – Introduction to Prior Rights and Relative Grounds Purple Module – Searching and Comparing Trade Marks Brown Module – Preparing and Filing Trade Mark Applications Orange Module – Initial Stages of Prosecuting Trade Mark Applications Jade Module – Next Stages of Trade Mark Applications, Registration and Renewal Silver Module – Evidence of Distinctiveness Black Module – Filing, Prosecuting and Defending Oppositions Blue Module – Infringement & Civil Procedures for Trade Mark Cases Rust Module – Counterfeiting and Parallel Imports Pink Module – Loss of Trade Mark Rights Gold Module – Licences and their Recordal Bronze Module – Trade Mark Assignments and their Recordal Green Module – Certification and Collective Marks Tan Module – The Relationship between Trade Marks and Domain Names

Introduction

Introduction The UK Trade Marks Training Manual

Introduction Welcome to the Trade Marks Training Manual This is a completely revised and substantially rewritten edition of the CIPA Trade Marks Training Manual. We have designed this Manual to give you a basic introduction to the law and practice relating to trade marks in the UK. (Separate manuals are available covering the Community Trade Mark and the Madrid systems.) The Manual is designed primarily for those of you who are new to the trade marks profession and who have not previously studied law. Generally speaking, we recommend that you should work through this Manual within about the first six weeks of joining this profession. Students who already have some knowledge of trade marks or the law should discuss with the person responsible for their training (your “trainer”) how they will get the most out of this Manual without spending too much time covering areas with which they are already familiar. Aims of this Manual In this Manual we aim to: Provide a defined structure for your training. Introduce, to those who have not encountered them before, subjects: of a general nature (“a trade mark is...”); and of a more specific nature (“applications to register trade marks may be filed...”) Introduce you to the many resources available, so that you will be able to locate the ones you need - both those from which you can learn, and those which are essential for doing the job properly (including textbooks, Internet facilities, published cases and files within your own offices). Help you to understand your own role within your practice. Enable you to take an active and responsible role in your own training. Introduce you to the basic skills necessary: to advise clients; to take instructions from clients; and to represent clients and act in their best interests. Put you in a position where you are able to anticipate examinations and additional studies.

Introduction

Core skills necessary for a Trade Mark Attorney

This Manual takes into account the core skills you will need in this profession, as identified in the CIPA Journal August 2004 page 448: Knowledge of and practical understanding of UK and Community Trade Mark law, including passing-off. Knowledge of practice and procedure of the UK Trade Marks Registry (the government department that is responsible for the UK Register of Trade Marks, part of the Intellectual Property Office) and OHIM (which administers the Community Trade Mark). Knowledge of the Madrid Protocol system (a system for the international registration of trade marks). Drafting of pleadings in trade mark proceedings. Evidence before both the UK Trade Marks Registry and OHIM. Searching (including common law searching) in relation to trade marks. Provision of opinions on infringement (and defences to infringement). Knowledge of the interrelationship between the laws of designs and trade Marks. Understanding of trade descriptions, the role of Trading Standards Officers and of criminal proceedings. Practical understanding of co-existence agreements and other agreements relevant to trade marks. Good analytical skills, including the ability to analyse clients’ requirements and devise appropriate protection for relevant trade marks, including subbrands. General understanding of trade mark laws of significant foreign jurisdictions, in particular their differences from UK law. (You will have seen references above to OHIM and the Madrid Protocol system – we do not look at these in depth in this Manual, but we suggest that when you have finished this Manual, you move on to the manuals in this series that deal with these topics. You will also find that we look at some of the core skills areas in greater depth than others.)

Introduction Preparation for your examinations This Manual takes into account the syllabus for Paper T1 of the Joint Examination Board examinations. For this, you are expected to show 1.

A general knowledge of the whole of Trade Marks Act 1994.

A working knowledge of the following sections of the Trade Marks Act 1994 and the associated Rules: 1 to 3, 5 to 7, 9 to 13, 21 to 28, 32, 33, 35, 37 to 41, 45 to 48, 56, 64, 100, 103 and Schedule 3 (Transitional Provisions).

An outline knowledge of leading cases relating to trade marks.

A general knowledge of basic principles of the law of passing off.

Please do not worry if there seems to be a lot to take in at this stage. This Manual will enable you to study these subjects at your own pace! Structure The manual is divided into Modules. Each Module covers a different aspect although you will find, working through the Training Manual, that many of the aspects are closely related to one another. The Modules are colour-coded so that you and your trainer can decide the order in which you will tackle them - although you will find that some Modules must be worked through before others. (We will tell you at the start of a Module if you need to have worked through another one first.) Your trainer will be able to tell you where to start. You may find that individual topics don't seem to make a lot of sense until you have worked through the whole Manual. Each Module begins with a short introduction to what it covers and what you will have achieved by the time you have finished it. The Modules will include some information, points for you to research, exercises to attempt and a short quiz to enable you to review what you have learnt. At the start of each Module, we indicate approximately how long it will take to complete, assuming careful study of all the recommended reading material. We will also tell you what additional materials you will need to complete the Module. In some instances, you will require access to the Internet – if you need any help with this, please ask your trainer, or another colleague. Please note that this Manual is not a textbook, and does not duplicate the roles of the excellent textbooks and volumes of case law already available. Instead, it will prepare you to use these and carry out your own studies and research. There is also a Trainer’s Guide, which the person supervising your training will have. This briefs them on what you will be studying, the resources you need, and matters you may wish to discuss later. It also has suggested further reading, and we recommend strongly that you read this additional matter as soon as possible after completing the module; this will help you to build on what you have just learned and will broaden your knowledge and understanding.

Introduction

We use some symbols in the Manual to identify the various exercises, and the materials that you will need to complete them.

Written exercises are denoted as

tells you that the next exercise is a reading one, rather than a written one. We will often ask you to read parts of given texts or source materials. Sometimes we will ask questions afterwards, sometimes not. In either case, we emphasise that the reading is designed to be useful in itself and to form part of your learning.

V lets you know that you should be thinking about something - but without needing to write anything down.

tells you that the answers to a written exercise are on the next page.

Introduction

warns you that Internet access is necessary to complete the exercise

This symbol tells you that you have almost completed the Module, and should now be reviewing what you have learnt, and making notes of anything that you need to follow up. We do not intend that you should try to work through the Manual in one sitting. You will learn more from it if you vary your studies with actual trade work, which will help you to put what you have learned into context and into practice. Your trainer should be able to help you with this. It may sound obvious, but we strongly recommend that you find a quiet place to work! Offices can be too full of distractions for you to be able to concentrate so try to get away from ringing telephones and other interruptions. Ask the person responsible for your training to suggest a suitable spot.

Now begin the Red Module.

RED

RED MODULE

Sources and Resources

RED

This is the first Module that you should work through. We start by looking at the purpose and history of trade marks, and introduce you to the Trade Marks Act 1994 and secondary legislation. We also include a section on useful textbooks. We start by looking at the purpose and history of trade marks, and introduce you to the Trade Marks Act 1994 and secondary legislation. We also include a section on useful textbooks.

To complete this Module, you will need copies of The Trade Marks Act 1994 The Trade Marks Rules 2000 you can find this at www.opsi.gov.uk/si/si2000/20000136.htm The Trade Marks (Amendment) Rules 2004 www.opsi.gov.uk/si/si2004/20040947.htm The First Council Directive (89/104) of 22 December 1988 to approximate the laws of the Member States in relation to trade marks The Paris Convention for the Protection of Industrial Property, as amended at Stockholm 1967 and 1979, effective 3 June 1984 www.wipo.int/treaties/en/ip/paris The Trade Mark Handbook

When you have completed this Module, you will have Spent time accessing trade marks information on the Intellectual Property Office website Identified the sections of the Trade Marks Act 1994 that define “trade marks” and “registered trade marks” Stated the rights of the proprietor of a registered trade mark Identified the period of priority allowed under the Paris Convention Stated the first reason for seeking to approximate the laws of Member States. This Module will take about two days to complete.

RED

We will begin by thinking about the purpose of trade marks.

Imagine that you are a manufacturer. Your goods are of high quality, so you want your customers to be able to identify them readily and recommend them to others. You need to ensure that your customers can do this, and ask for them again and again. So you give your goods a trade mark - something to distinguish your goods from those manufactured by anyone else.

Now consider the ways that you as a customer identify goods when you go shopping. What makes you choose a product? How do you identify it? Please list all the forms you can think of that a trade mark might take.

The ones we have thought of are listed on the next page.

RED Trade marks may include: A name. Numbers or letters. An ordinary word. An invented word. A logo - often referred to as a “design” or a “device”. Packaging or the shape of a container. A slogan. A jingle. A scent. Colours. It is harder to acquire exclusive rights in some of these than others - a topic we'll be considering later. If your list differs much from ours, please make a note to discuss it with your trainer later on.

Now that we have seen the forms that trade marks take today, we will go back and take a brief look at their history.

RED

The Law relating to Trade Marks Traders want legal protection to stop competitors from, for example, stealing their marks and gaining an unfair commercial advantage. The history of trade marks goes back a long way. Archaeologists have found that the ancient Romans used trade marks to identify the origins (or perhaps the makers) of various wine jars. However, it was not until the second half of the nineteenth century, following the Trade Marks Registration Act 1875, that a Trade Marks Register was set up in this country - to act as a legal record of ownership of trade marks for goods. (It is interesting to know that the first trade mark ever registered in the United Kingdom - a label including the Bass red triangle, applied for on 1 January 1876 - is still registered and used today!) Further legislation followed - the Patents, Designs and Trade Marks Act 1883, the Trade Marks Act 1905, the Trade Marks Act 1919, the Trade Marks Amendment Act 1937 and the Trade Marks Act 1938 and others. It first became possible to register trade marks for services (such as restaurants or banking services) in 1986. By the 1980s, businesses felt that the provisions of the 1938 Act were no longer suited to their needs. Industry had inevitably changed in the last 50 years. Furthermore, the 1938 Act did not permit businesses based only in the UK to file a single application covering more than one class of goods or services; this put UK businesses at a disadvantage when compared with, for example, most other European Union countries. Trade mark rights in a harmonised Europe obviously were not contemplated in an Act which came into force before the Second World War. In 1989, the European Community addressed the need for a harmonised trade mark law covering all the Member States of the European Union. This was the so-called “Harmonisation Directive” (89/104), also referred to as the “First Council Directive”. The intention of the Harmonisation Directive was to set out a core set of substantive law provisions for trade marks, which we will discuss in more detail later in this Module. The Trade Marks Act 1994 was therefore introduced in the UK. In contrast with earlier Acts, it stresses that the policing of trade marks is the concern of businesses themselves, rather than government agencies. It is the Trade Marks Act 1994, and its implications, that we will consider in this Manual. In addition to the Trade Marks Act 1994, you will learn about the Trade Marks Rules 2000, and the Trade Marks (Amendment) Rules 2004, which specify some matters and requirements in detail.

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The Trade Marks Act 1994 -

Next, we will look (in outline at this stage) at UK legislation - the Trade Marks Act 1994 - and give you a chance to familiarise yourself with it. It is ultimately your most important resource. You should have a copy of the Trade Marks Act 1994 (as amended). Look now at the very beginning of the Act - at the “Arrangement of Sections”. This lists the sections of the Act, with their headings, and gives a brief description of their content.

Below you'll find a short quiz on the sections of the Act. It's a straightforward exercise, designed to help you begin to find your way around the Trade Marks Act 1994. (You will cover more of this material in other parts of the Manual.) Which section or sections 1.

Define “trade marks” and “registered trade marks”?

Define the meaning of “infringing goods”?

Deal with licensing?

Refer to the Paris Convention?

Provide for the Register of trade mark agents?

RED

Compare your answers with ours.

Section 1 defines “trade marks” and section 2 defines “registered trade marks”

Section 17.

Sections 28, 29, 30 and 31 make provisions regarding licensing.

Sections 55 to 60.

Section 83.

Spend some time now reading right through the Act, to begin learning your way round it. When you have done this, we'll consider some sections in more detail.

Important You do not need to understand everything at this early stage. At the moment, you should simply be familiarising yourself with the structure and general contents of the Act.

RED

Another exercise

Referring to the Trade Marks Act 1994, answer the following questions.

How and where is a “trade mark” defined?

What right does a proprietor have who has registered a trade mark, and where is this defined?

What is meant by “exhaustion of rights”, and which section gives the definition?

What is meant by a “Convention application”, and which section deals with this?

The answers are on the next page.

RED

Check your answers.

Section 1 of the 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”. Note that, while the section indicates what a trade mark may consist of, it does not make exclusions. Look back at the list of types of trade marks you made earlier and consider how those might fall within the definition of section 1. For example, a scent could be difficult to represent graphically.

The proprietor of a registered trade mark has exclusive rights in it. Any use of the trade mark without the consent of the proprietor (subject to certain restrictions which we will consider later) is infringement. Section 9 defines this.

Section 12 deals with the exhaustion of rights. If a proprietor of a registered trade mark has placed the goods on the market (or has consented to such marketing by someone else), anywhere in the European Economic Area, there is no infringement if the goods are imported into the UK by someone else under the same trade mark - providing, for example, that the goods have not been changed or damaged in the interim.

A Convention application is one that has been filed to register a trade mark in a Convention country. Section 35 deals with this. The Convention in question is the Paris Convention of 1883. We will be looking at this Convention in more detail further on in this Module, and at the question of priority applications in the Module covering filing applications. See also section 55 of the Trade Marks Act 1994.

Now read on.

RED

Secondary Legislation You have now looked at the 1994 Act, which provides the basic or “primary” legislation providing for the registered protection of trade marks. However, there are aspects not covered in detail by the Act - aspects which were not specified - in particular, how the law is to operate, and procedures for registering or dealing with marks.

Trade Marks Rules So, to give effect to the law, various Rules are made and passed by Parliament. These are called “secondary legislation”. The person actually responsible for the Trade Marks Rules 2000 is shown at the end of section 74 of the Rules. It is the Parliamentary Under Secretary of State for Science and Innovation, Department of Trade and Industry. You should have a copy of the Trade Marks Rules 2000, as amended by the Trade Marks (Amendment) Rules 2004.

At the front, you will find an “Arrangement of Rules”. Look through this now - it will give you an idea of the scope of the Rules. As you can see, they relate closely to the Act. You'll be looking at some of the rules more closely when you tackle specific topics in the next Modules.

Statutory Instruments These are secondary legislation passed by parliament, and can also affect trade marks. Full lists are available, including on the Intellectual Property Office website, which we will look at in the next Module.

RED Legal proceedings and appeals The Registrar has the powers of an Officer of the Court, and the Trade Marks Registry is considered a “Tribunal” for the purposes of the conduct of relevant legal proceedings. A Tribunal has, broadly, the same powers as one of the lower courts, in that a decision made by the Registrar is binding on the parties (unless one of the parties appeals successfully against the decision). This means that some decisions of the Registrar may be appealed, either to the “Appointed Person”; or directly to the High Court.

Please read sections 72 to 77 of the Trade Marks Act 1994. Next, we will look briefly at the courts.

The High Court The High Court Chancery Division has jurisdiction over trade mark infringement rectification revocation invalidity; and Customs seizure.

RED

You can bring proceedings in the County Court – including proceedings to prevent “passing-off”, which we discuss in the Yellow Module.

You may appeal to the Court of Appeal from High Court judgments, but only if you have permission to do so (the situation was slightly different until the end of 1998).

You may appeal, again with permission, to the House of Lords from the Court of Appeal.

At any point in proceedings, you may refer the case to the European Court of Justice. If the case has reached the House of Lords, and a point of Community Law is involved, then it must refer the case to the European Court of Justice. Lower courts may do so.

For more detailed information, please read section 121.2 of the Trade Mark Handbook now.

The role of the European Court of Justice Throughout this Manual, we normally abbreviate European Court of Justice to “ECJ”. The role of the ECJ is different depending on whether it is an Article 234 reference or an appeal from OHIM via the Court of First Instance (but do not worry too much about these terms yet). This question was looked at in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97) [2000] FSR 77-162, where the ECJ considered a case referred by a German court in Munich.

RED

In this case, the Advocate-General held that “The role of the Court of Justice is limited to providing the national court with the guidance on interpretation necessary to resolve the case before it, while it is for the national court to apply the rules of Community law, as interpreted by the court, to the facts of the case under consideration…”. Make a note to read the rest of this case later. The purpose and function of a “Referral” to the ECJ is different from that of a decision of the English – or German – national courts. Under Article 234 EC, the role of the ECJ is limited to providing the national court with guidance on interpretation necessary to resolve the case before it, while it is for the national court to apply the rules of Community law, as interpreted by the Court, to the facts of the case under consideration.

As you read earlier, decisions of the ECJ are having an increasing effect on the law as it affects the UK, dealing with matters such as: absolute grounds for refusal; colour marks; smell marks; what constitutes “use” of a trade mark; and what sorts of marks are confusingly similar.

Even where ECJ decisions do not directly involve UK marks, the decisions of the ECJ do influence the practices of the UK Trade Marks Registry.

We will take a look at the ECJ website in the Ivory Module. It includes published decisions in connection with trade marks.

RED

Case Reporting and Sources Parliament passes the primary legislation. The courts then consider this legislation when trying cases, and interpret this legislation in their judgments. The result is case law, which Courts then read and follow. The UK Trade Marks Registry also refers to case law when considering trade mark matters. Although not all Court decisions concerning trade marks are published, many decisions - for example, those of the High Court or the House of Lords - frequently are. Sometimes you may find useful summaries of recent cases - particularly ones which may create new precedents - in the newspaper law reports, particularly in The Times (TLRs). When full reports of the decisions are published, these usually appear in Fleet Street Reports - known as “FSRs” Reports of Patent, Design and Trade Mark Cases – “RPCs”. European Trade Mark Reports - “ETMRs” Sometimes these also contain reports of decisions made by the Trade Marks Registry about trade mark cases, including applications and oppositions, in which you will be able to read the reasoning behind the decision. Unreported Trade Marks Registry decisions are published as transcripts and are available from the British Library in London or Leeds, and on the Intellectual Property Office website. Law reports are not limited to cases decided in the UK. Trade mark owners can now appeal to the ECJ on UK decisions, so we need to know about decisions made there. Moreover, decisions of foreign courts (particularly where the jurisdiction is derived from the English system) are often published here if the decision is likely to influence the reasoning of English courts. However, overseas decisions, other than those of the ECJ, are not binding on English courts. ECJ decisions can be found in the ETMRs and Common Market Law Reports (“CMLRs”). The CMLRs are particularly useful on trade mark-related competition and exhaustion of rights cases. In the Ivory Module, we will also take a look at accessing case law via the Intellectual Property Office website.

RED

The First Council Directive

We have referred to the First Council Directive, to approximate the laws of the Member States relating to trade marks. This had a substantial influence on the final form of the 1994 Act, so it is worth spending some time considering its philosophy.

You should have a copy with you. Read it now. Note the way in which it is set out, including its long “Preamble”. This style is different from legislation in this country, including the Trade Marks Act 1994. The Preamble Statements are an extremely important aid to interpretation of the words in the Directive or Recitals, and thus also to many sections of our 1994 Act. Please do not be put off by its length!

When you have finished this Module, please make a note to read the additional information in the Trade Mark Handbook, paragraph 119.1.2 and 119.1.3.

Next, try the exercise on the next page.

RED

Referring to the Directive, answer the following questions.

What is the first reason for seeking to approximate the laws of Member States?

Is it an object of the Directive that all Member States should have, as closely as possible, the same laws concerning trade marks?

What types of marks does the Directive apply to?

Of what may a trade mark consist?

What earlier rights (other than rights in trade marks, collective marks or certification marks) are specified as those which in particular may prohibit use of a trade mark?

What limitations, if any, does the Directive make to the rights in a trade mark enjoyed by the proprietor?

Are proprietors permitted to enforce rights in registered trade marks which they are not currently using, if, for example, they wish to prevent competitors from adopting similar marks?

Now check your answers.

RED

Our answers.

The first reason for needing to approximate the laws of Member States is that previously, different laws in different countries “contain disparities which may impede the free movement of goods and freedom to provide services and may distort competition within the common market”.

No - for example, where a country has always allowed rights in a trade mark acquired through use, the Directive does not seek to change this.

The Directive applies to trade marks, collective marks and guarantee or certification marks. Article 1.

“A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from the goods or services of other undertakings.” Article 2. Look again at the definition of a trade mark in the UK Trade Marks Act 1994.

Rights in a name, personal portrayal, copyright or an industrial property right are specified. Article 4 (c). Note, however, that this list is not exhaustive.

RED

Article 6 covers the limitations to trade mark rights. A proprietor cannot use a trade mark right to prevent a third party from using his or her own name or address indications concerning the characteristics of the goods the trade mark itself if this is necessary to indicate the purpose of the goods or services - for example, if a manufacturer makes film which is suitable for KODAK cameras, it is able to use the KODAK trade mark in this context provided that the third party is using any of these things in accordance with honest practices. Article 6 also protects the right of a third party to continue to use a mark in which there is an earlier right in a particular territory. We will consider these areas again in the Blue Module, covering infringement.

Not necessarily, for a mark that has been registered for more than five years. If the proprietor has not made genuine use of a mark within five years from the date of registration, the registration is vulnerable to revocation. Articles 10 and 12.

Next, we'll move on to look at the Paris Convention.

RED

The Paris Convention for the Protection of Industrial Property The Paris Convention for the Protection of Industrial Property (of March 20, 1883,as revised at Brussels on 14 December 1900, at Washington on 2 June 1911, at The Hague on 6 November 1925, at London on 2 June 1934, at Lisbon on 31 October 1958 and at Stockholm on 14 July 1967, and as amended on 28 September 1979) covers all forms of industrial or “intellectual” property, not just trade marks.

Please spend some time now reading the Convention. (It is quite long, and initially you may find the language difficult, so you may need to read it more than once.) Then tackle the quiz. 1.

Whose rights are provided for by the Convention?

What period of priority applies to trade marks?

When claiming priority, what additional documents must be filed, when and with what extra fees?

If proprietors of registered marks fail to indicate that the marks are registered (for example by using an R in a circle) how does this affect their rights in a mark?

Which section provides for the protection of well-known marks?

What is meant by “the country of origin”?

Where can imported goods unlawfully bearing a trade mark be seized?

What must be published in each country of the Union?

And a final question for research (the answer may not be in the copy of the Paris Convention you are using) - when did the UK become a member?

RED

Compare your answers with ours.

The Convention provides that those who are nationals of any country which belongs to the Union (of the countries to which the Convention applies) shall enjoy the same rights in other member countries as are granted to nationals of those countries. Article 2. This is known, in brief, as the principle of equality of treatment. Note that the Union is frequently joined by new countries - in dealing with trade mark applications abroad, you will often need to check whether the country you are filing in is a member. INTA (the International Trademark Association) and WIPO (the World Intellectual Property Association) provide lists of new accessions.

The priority period for trade marks is six months. Article 4 C (1).

Article 4 D (3) states that a copy of the application may be required, although this should not need to be “authenticated” and it can be filed at any time within three months of the application claiming priority without extra fees. A certificate of the date of filing may also be required, and a translation into the language of the country where priority is being claimed. Nothing (other than the normal application documents for the country in question) needs to be filed with the application to support the claim to priority. In practice, it is essential to check when you file an application claiming priority from, for example, a UK application, what exactly is required by the country in which you are filing. The agent you are instructing in the country in question should be able to tell you. You should also be aware that not all countries who are members are bound by the full text of the Paris Convention. Again, if in doubt, check with a local trade mark agent.

Under Article 5 D it should not make any difference. Note, however, that this does not apply in all circumstances. In the US it is essential to indicate that a mark is registered if proprietors wish to be able to claim damages following an infringement of the mark - although the proprietor may still take action to prevent infringement.

Article 6bis provides for the protection of well-known marks.

RED

The country of origin is “the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national.”

Provided that the national laws allow it, such goods can be seized in the countries where the mark is registered 2nd into which they are imported, or in the country where the mark was affixed. Article 9(1) and 9(2).

Each country must publish an official periodical journal. Article 12. In the UK, the relevant journal for trade mark purposes is the Trade Marks Journal, which is published electronically by the Intellectual Property Office, of which the UK Trade Marks Registry is part.

The UK became a member on 7 July 1884.

Well-known trade marks The Paris Convention also provides for the protection of well-known trade marks, under Article 6bis, as you saw earlier. It can be difficult to define exactly what constitutes a well-known mark – please make a note to discuss this with your trainer later.

Section 56 of the Trade Marks Act 1994 deals with this. Please read this section now.

RED

Note that, to qualify for protection in the UK under this section The mark must be well-known in the UK The trade mark owner must be a national of a Convention country, or be domiciled in one, or have a commercial or industrial establishment in a Convention country.

You should have a copy of the Trade Mark Handbook with you. Please read section 119-106 “Protection of well-known trade marks” now.

There are countries where rights in a trade mark are generally granted only by registration, so the additional protection afforded to well-known marks can be very important.

However, some countries also have laws to prevent unfair competition. In the UK, we also have some protection for unregistered marks, under the common law tort preventing “passing-off” (which we talk about in the Yellow Module).

RED Textbooks A number of textbooks are available, which provide a basic understanding of the law of intellectual property. They are designed for students at both undergraduate and postgraduate levels, and all practitioners are likely to have a copy of at least one of them. In your office, you may well find Intellectual Property, W.R. Cornish, Lionel Bently and Brad Sherman, published by Sweet & Maxwell Intellectual Property Law, Bently & Sherman, published by Oxford University Press Intellectual Property Law, Jennifer Davis, published by Butterworths They normally deal with all the main areas of intellectual property law, rather than concentrating on one area of intellectual property, which is useful since it puts subjects in the wider context of intellectual property generally. For a very basic understanding of trade marks, the book by Jennifer Davis is useful. However, for a more in-depth understanding of trade marks, the text books by W.R. Cornish, or Lionel Bently and Brad Sherman are very useful. The text books also make numerous references to various case law and judgments. However, as you will learn, the law is constantly changing and there is no guarantee that any of the textbooks will provide the most recent update on case law. For this, you will need to keep up to date with recent case law from the courts – including the High Court, the House of Lords and the ECJ. These can now be found on the Internet and various databases. The most useful books dealing specifically with UK trade marks are The Trade Mark Handbook, Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys, published by Sweet and Maxwell Kerly’s Law of Trade Marks and Trade Names, 15th Edition, David Kitchin, David Llewelyn and James Mellor, published by Sweet and Maxwell. Make a note to have a look at these when you have finished, to begin to familiarise yourself with the areas that they cover in detail. When you are practising, you should find yourself referring to them frequently.

RED

You have almost reached the end of this Module, which has introduced you to trade mark law and practice.

If there are points still puzzling you, or anything you want to discuss further with your trainer, make notes now, and use them as a basis for discussion before you move on to the next Module. You should work through the Ivory Module next.

On the next page, you will find a short quiz, revising some of the topics you have just been looking at. Tackle the quiz to see how much you can remember. Try to do it from memory - although if you do get stuck, look back through the Module to refresh your memory.

RED Test Yourself Use this short quiz to see how much you can remember.

Which Act currently in force in the UK provides for the registration of trade marks?

Who makes the Rules relating to trade marks?

The Paris Convention provides that each country belonging to the Union must have a trade marks publication. What is this in the UK and who is responsible for publishing it?

What types of marks can be registered in the UK (excluding international provisions)?

In the Act, what is meant by a “trade mark”? Try to get the wording as close as possible to that of the Act.

Under the Paris Convention, what period of priority is allowed for trade marks, and what does this allow?

What happens if a registered trade mark has not been used for a continuous period of five years?

The answers are on the next page.

RED

How did you get on? Check your answers.

The Trade Marks Act 1994 provides for the registration of trade marks.

The Parliamentary Under Secretary of State for Science and Innovation, Department of Trade and Industry.

The publication is the Trade Marks Journal and it is published by the Intellectual Property Office.

Trade marks (including marks used in respect of services), collective marks and certification marks can be registered.

Section 1 (1) states “In this Act a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”

The priority period allowed is six months. It allows an applicant to file an application, based on a home application, in another Convention country within six months of the original filing. The subsequent application will then be treated as if it had been filed simultaneously with the original application and will take priority over applications filed in the chosen country in the interim.

It becomes vulnerable to revocation.

Ivory

IVORY MODULE

Introduction to Internet Resources

Ivory

This is the second Module that you should work through.

We begin by taking a look at what may well be your most helpful working tool – the Intellectual Property Office website. We also introduce you to the ECJ website and cases available there. Finally, we spend some time looking at how the very useful Westlaw database is organised. (If your office doesn’t have access to the Westlaw database, please do not worry – we do mention how to find some of the information by other means.)

To complete this Module, you will need: Internet access; and access to the Westlaw database (a proprietary database).

When you have completed this Module, you will have: spent time accessing trade marks information on the Intellectual Property Office website; begun the process of using the Westlaw databases to retrieve information.

This Module will take about half a day to complete.

Ivory

Information available from the Intellectual Property Office

The Intellectual Property Office provides some excellent basic information, both for our purposes and those of the general public, on its website. (Important - the exercises are based on the website at March 2006. However, the website is updated regularly, so you may find some minor changes – if you can’t locate the pages or information that we have mentioned, try clicking on various options until you find their new locations, or more up-to-date information. You should then still be able to complete the exercises.)

Go to the website now. It is at www.ipo.gov.uk. You should see a short welcoming statement, and an icon inviting you to click for help in choosing between the various intellectual property options. (It says “Click here for help choosing”)

Click on this. You should see that it is arranged as a set of simple “Yes”, “No” and “Not sure” questions.

Spend a little time here, clicking to explore the various options, until you reach the pages covering branding. (The exact content of these pages varies from time to time.) Then continue until you reach the “Conclusion”.

In the Red Module, we looked at the origins and purpose of trade marks. Now let’s take a look at the Intellectual Property Office view of this.

Ivory

Back to the website.

Click on “Go to trade marks”. You should find yourself at a trade marks index page.

Click on “What is a trade mark?”

What is a trade mark?

When you have read it, please answer the following questions, from memory. 1.

What does the website identify as the factors that make a trade mark registrable?

The website suggests additional forms of protection for trade marks. What are they?

Now check the answers.

Ivory

The answers.

It must be distinctive for the goods or services not deceptive, or contrary to law or morality not identical or similar to any earlier marks for the same or similar goods or services.

Company name registration Domain name registration.

These concepts – “distinctive”, “not deceptive”, “not similar to any earlier marks” and “same or similar goods or services” are key concepts when dealing with trade mark law and practice. You will learn much more about these concepts as you work through the Manual.

Historical overview We took a look at the history of trade marks in the Red Module. The Intellectual Property Office also gives a brief historical overview, which it is helpful to look at now.

Ivory

Back to the website, and the trade marks index page.

Click on “Trade mark history”, and read the information you find.

Return to the trade marks index page, and click on “Benefits of trade mark protection”. Read the page.

Using the website to obtain an overview

Next, you will spend some more time working through the website and reading the information. At this stage, we are aiming to give you an overview of the subject, and of the information that you can access. Please make as many notes as you like while you are doing this, including notes of points you would like to research further, and anything that you don’t understand and would like to ask your trainer about when you have reached the end of this Module.

Please be reassured that we don’t expect you to understand everything you read at this stage. Many of the subjects are topics that we will cover in far more detail in other Modules.

Ivory

Return to the trade marks index page, and click on “How to apply for a trade mark”. Read the information, including that on the examination process. (We will talk about the application process in detail in the Brown Module.)

Return to the trade marks index page, and click on “Forms, fees, publications and subscriptions”. This lists all the forms which the Trade Marks Registry currently uses, and also gives the most up-to-date information on fees that are payable. We will talk about some of these forms in other Modules, when we deal with the relevant topics.

Return to the trade marks index page, and click on “How to apply for a trade mark” again.

Scroll down and click on “The examination process”. (In future, a large part of your work will involve answering examiners’ letters.)

Scroll down until you find “Evidence of use” Read this – again, this is a subject we will cover in much greater detail, in the Silver Module. However, this site has helpful basic information, so you will benefit from reading the information here.

Return to the trade marks index page, and click on “Trade marks in detail”. You will see a list of links.

Click on “Hearings”. Read the information here. We will return to the subject in the Orange Module, but it will help you to have an overall picture if you read the website page now, carefully.

Return to the “Trade marks in detail” page, and click on “Opposition”. Read the information. (We will talk about this in detail in another Module.)

Return to the “trade marks in detail” page, and click on “Extension of time”. Read the information.

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Return to the “trade marks in detail” page, and click on “Revocation”. Read this carefully. (Don’t worry too much about the detail, as we will look at this in much greater depth later on.)

Return to the “trade marks in detail” page, and click on “Invalidation” and, again, read the information.

Return to the “trade marks in detail” page, and click on “Passing-off and infringement”. Read this short introduction to these two topics. These are complex areas, and we look at them further in the Yellow and Blue Modules.

Return to the trade marks index page, and click on “Reference material” and then on “Law practice directions”. Look at the variety of information that is available here – click on some of it to take a look at current practice in a variety of areas. (We will talk about using case law in the White Module.)

Return to the reference material page, and click on “Practice amendment notices”. Again, you will see a variety of up-to-date material is available – click on some of the circulars to see what they say. You will need to develop a working habit of checking this page frequently to see what is new and up-to-date.

Return to the reference material page, and click on “Trade Marks Work Manual”. The Trade Marks Registry provides a full printed copy which you can buy. Your office should have one – if you haven’t seen it already, ask your trainer to show it to you. At the moment, you can access chapters 3, 5 6, 10, 12, 13, 15 and 17 electronically, and these are very useful. Again, these are pages that you will find yourself returning to very frequently.

Return to the trade marks index page, and click on “Reference material” and click on “Trade Mark Law (Act, Rules and Statutory Instruments)”. Click on “Trade mark law”, and read what you find.

Ivory

Return to the main trade marks index page. Click on “Trade mark hearings, decisions and appeals”, and then read this page. Click on some of the decisions to take a brief look (but don’t spend too much time on these at this stage).

Accessing case law via the Intellectual Property Office website

You have already accessed the main trade marks index page at www.ipo.gov.uk/tm.htm. Go back there now.

Now scroll down to “Trade Mark Hearings, Decisions and Appeals”. Click on it.

Now scroll down to “Legal decisions from 1998” and click on it.

Look at some of these cases if you wish, but there is no need to spend too much time on these at this early stage.

Ivory The ECJ website

In the Red Module, we mentioned that trade marks cases decided by the ECJ influence the UK Trade Marks Registry. You have also just seen some references to ECJ cases on the Intellectual Property Office website.

You can also find these (and others like them) on the ECJ website. It is not particularly user-friendly, so we’ll give you some suggestions for accessing the information you need.

Note also that there is a link to the “Search” section from the Intellectual Property Office website that you have just been looking at.

Let’s look at the ECJ website in a little detail.

Go to http://curia.europa.eu/index.htm

Ivory

Click on EN to give you the English language option.

Run your mouse over “Case law” and click on “Search form” from the menu which appears.

Read the information, and then click on “Search form”.

At this stage, you probably don’t have a particular case number to enter. So, where it says “Date”, type in the date range you are interested in. For example, for the four months January to April 2005, type in 2005-01-01 – 2005-04-30. Remember to put the dates in year-month-day order.

Where it says “Field”, click to see the menu.

You will see many options. Click on “Intellectual property”

Scroll back to the top of the screen and click “Submit”.

Now take a quick look at your results, with the case number highlighted in blue, starting either with the letter “C” (for ECJ) or “T” (for Court of First Instance). Click on the one you want. Pick a line that says “Judgment”. The Court of First Instance – “CFI” – is the junior European Court. Appeals from the CFI are heard by the ECJ (European Court of Justice). We discussed the role of the European Court of Justice in the Red Module.

Ivory Westlaw Westlaw is an online legal research service designed to provide instant access to case law and a whole host of legal information and statute to individuals. You can use Westlaw to Find, verify, read and interpret statutes Monitor breaking news and legal developments Search and retrieve up-to-date case law. We will talk now about how to get the most out of Westlaw. Important – these instructions were correct at the time of writing, but this site changes frequently, so you may need to click on different links to find the pages we mention. We also recommend that you ask someone who is experienced in using this database to assist you.

Log on You will probably find that your firm has already subscribed to Westlaw http://www.westlaw.co.uk/. You will probably be taken to a sign-on page. Before you can start searching on Westlaw you will need to log on using a Westlaw password and Client ID. If you don’t already know these, please ask your trainer now. Fill in the relevant boxes. Once you have logged on, you will find yourself either on a page that has a menu of shortcuts on the left-hand side and boxes to complete to carry out a search on the right hand side, or one that has a Directory menu on the left and a “Search the Westlaw Directory” box on the right, among other things. If you see the second page mentioned, please click the “UK IP” tab until you find the page that has the Shortcuts menu on the left and “Intellectual Property - Case Locators” on the right.

Ivory

Click on “IP tips” on the left. Spend some time reading the page that appears. It is full of useful information about using the database (rather than about IP generally).

Close the “IP tips” box. Now click on “Intellectual Property databases”.

We will look at how you can find useful information here. As an example, in Box 1 on the right-hand side, type “evidence of use” (be sure to include the quotation marks). Now check the box under heading 2 for Kerly's Law of Trade Marks and Trade Names.

Now click “Go” (box 3). After a few moments, a list of references from the book should appear, with the text of the first one on the right-hand side. Look at it, and you should see your chosen search terms appear. Spend a few minutes looking at the various references available, but there is no need to spend a long time on this at this stage.

If you wish, go back, via the “Back” button in your browser, and check one of the boxes for a different database, and see what appears. (You may find that you get a lot of information that doesn’t relate to trade marks from some of the other sources.)

Go back again, until you see the Shortcuts menu. Click “Table of contents” and spend a few minutes looking at what is available.

Go back again to the Shortcuts menu. Click on “Commentary”. Type “convention priority” into the “Terms” box and see what happens. When you have seen what appears, go back – don’t try to print anything at this stage. When you have more experience and are more sure of what you are looking for, you can use the “AND/OR” boxes on the right to refine your searches.

Go back again to the Shortcuts menu. Click on “Case locators”. In the “Party names” box, type “Glaxo”. You should see a list of decided cases involving Glaxo Group Ltd. Scroll down the first one to see the format of the information here. There is no need to spend too much time looking at these, but please remember how to find all these cases.

Ivory

Go back again to the Shortcuts menu. Click on “Cases (full text)”. Again, type “Glaxo” in the “Party names” box. When the first case appears, again scroll down the first one to see the format of the information here. Once more, don’t worry too much about the detail at this stage, because we will look at case law in more detail shortly. You will find information from, among others European Trade Mark Reports Fleet Street Reports Reports of Patent, Designs and Trade Marks Cases. (You should remember that we referred to some of these in the Red Module.)

Go back again to the Shortcuts menu. Click on “Legislation”. This helps you to find a particular section of an Act or a specific Rule.

Go back again to the Shortcuts menu. Click on “International legislative materials” and note briefly what you find here.

Go back again to the Shortcuts menu. Click on “Current awareness”. Again, take a brief look at what is here, and remember how to find it again in the future.

You have almost reached the end of this Module, which has introduced you to some of the most useful resources available to you on-line. If there is anything you want to discuss further with your trainer, or if you had problems using any of the sites, or finding any specific pages or information that we have referred to, make a note now. You should talk to your trainer about these matters before you move on to the next Module. There is no final quiz for this Module.

WHITE

WHITE MODULE

Reading and Referring to Case Law

WHITE

In other Modules we see that, for an outline of the law concerning both registered and unregistered marks, we often refer to case law. It is the source of precedent, which is the body of law based on earlier decisions. A precedent is a judgment or decision of a court, which is then followed.

In this Module, we'll be taking you through the formats in which reported decisions are published and introducing you to reading and interpreting case law.

You will need copies of the decisions concerning British Sugar Plc v James Robertson & Sons Ltd (the TREAT case), reported at [1996] RPC 9 Mirage Studios and others v Counter-Feat Clothing Company (the "NINJA TURTLES" case), reported at [1991] FSR 145 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (The CANON case) (Case C-39/97) ECJ [1999] FSR 332

When you have finished this Module, you will have Read through three decided cases Answered questions on the cases Listed sources of information about decided cases.

This Module will take approximately one and a half days to complete.

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Case Reporting and Sources In the Red Module, you saw that we can find details of decided and published cases in Fleet Street Reports - known as "FSRs" Reports of Patent, Design and Trade Mark Cases - "RPCs". European Trade Mark Reports – “ETMRs” Common Market Law Reports - "CMLRs". Each case is cited (quoted in subsequent cases and other trade matters) by giving The year of the report (not the year of the judgment) in square brackets The initials FSR or RPC for example, as appropriate A number – traditionally, the page number, but for cases reported since 2001, however, each case of these reports has been given a case number; and we usually use this instead of the page number (although you will sometimes find the page number still being used for post-2001 cases).

In some other Modules, we look at very brief summaries of certain important cases. In particular, the Yellow Module examines how the tort of "passing-off" has been developed through case law. In this Module we are going to look in more detail at the format in which cases are reported, so that you will be able to refer to and interpret case law yourself. If you practise as a trade mark agent, you will need to refer to cases when taking an application through to registration, or when dealing with oppositions or cancellations, for example, or when advising on infringement or "passing-off" cases. We stress very strongly the importance of studying case law. Ready familiarity with key reported cases and the principles underlying them is essential, both generally and to pass your trade mark exams.

V Think now about how you might find out about decided cases. Who might have a duty to report them? How could you get copies for yourself? There's no need to write anything down, but think about this for a while and discuss it with your trainer when you have finished this Module.

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Suggestions Your office probably has a library of reported cases. When you have finished this Module, ask your trainer to show you where it is. You'll find it helpful to spend some time browsing through whatever is available. (If your office doesn't have a library, talk to your trainer about how you can find copies of published decisions.) Your trainer or another colleague may be able to give you a list of useful cases. You can also get similar lists from the Joint Examination Board, or your student representatives. However, do remember that these lists can never be exhaustive - so use them to build your knowledge, rather than relying on them exclusively. You'll frequently find, when you read reported cases, that whoever is hearing the case refers to earlier case law decisions and how they interpret them in relation to the case now being heard. These references are very useful. They will not only introduce you to the names of many of the cases you will be expected to know in the future, but they will often summarize the most important aspects of the earlier decisions. What is really important is to commit to memory the principle of a decision, rather than its name or its own unique facts. To assist your own studies, it's a good idea to keep your own notes of the names of decided cases, the topics (for example, “passing-off”, or oppositions) and the main points of the decisions.

Reading and Interpreting a Reported Case You should have with you a copy of the decisions in the TREAT trade mark case, the report of the TEENAGE MUTANT NINJA TURTLES case and the CANON case. These are the only reported cases you will need to use to complete this Module. We'll look first at the TREAT case. This is a useful case to study in detail since it discusses many matters under the Trade Marks Act 1994. For this reason, we also refer to it in other Modules.

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British Sugar Plc v James Robertson & Sons Ltd (The TREAT case)

Read the TREAT decision now. While you're reading it, notice the format and how the information is presented. This is as important, at this stage in your training, as why the decision was reached.

Take your time reading it, as it is fairly lengthy.

Move on to the next page of this Module when you have finished reading.

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When you've read the TREAT decision, try answering the questions below. You don't need to answer them from memory (unless you're really keen to test yourself!) - you can refer back to the RPC - the aim of this exercise is to familiarise you with the format of the report.

Who was the plaintiff?

What counterclaim did the defendant make?

At whom is most of British Sugar's advertising of the syrup product aimed?

What happened to the registered trade mark when the Trade Marks Act 1994 came into force?

Into which Class does it appear that the spread product would fall?

What should the court look at initially in deciding whether or not there is infringement?

Jacob J refers to an earlier decision concerning the definition of use under S 10 (1) of the Act. What is that decision?

Which case allows the court to refer to what was actually said in Parliament when the wording of the law is unclear?

Why is that case not followed here?

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10.

To what does Jacob J refer to support his belief that "the question of similarity of goods is wholly independent of the particular mark"?

11.

What does the Directive state particularly to be the function of a trade mark?

12.

On whom is the onus to produce evidence of proof in a trade mark revocation case and why?

13.

What, according to the decision, is meant by "capable of distinguishing" in Section 1(1)?

14.

What must be shown if a proprietor wishes to demonstrate that a mark has acquired a distinctive character?

How did you get on? Compare your answers with ours, on the next page.

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Our answers: 1.

The plaintiff was British Sugar Plc.

Robertson counterclaimed for revocation of the British Sugar registration. This sort of counterclaim is common practice in cases where trade mark infringement is alleged.

The advertising is aimed at the trade, rather than the public. Page 285, lines 36-40.

The mark was transferred to the Register kept under the new Act and "has effect as if registered under the 1994 Act". Page 286 lines 44-47.

If registered the spread would fall into Class 29. Page 290 lines 1-5.

The court should “see whether the sign registered as a trade mark is used in the course of trade and then to consider whether that use falls within one of the three remaining sub-sections”. Page 291 lines 27-30.

Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd. (1996) Page 292 lines 1-10. But note that at page 292 lines 43-49 and page 293 lines 1-8 Jacob J disagrees with the concession by counsel referred to.

Pepper v Hart (1993) allowed reference to “Hansard”. Page 292 line 14.

The case is not followed here because, it is stated, what matters is the language of the Directive. Page 292 lines 23-24.

10.

He refers to a recital in the Directive. Page 294 lines 42-53 and page 295 lines 1-8.

11.

According to the Directive, the function of a trade mark is "in particular to guarantee the trade mark as an indication of origin". Page 298 lines 12-14. 8

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12.

The onus is "on he who wishes to attack the validity of the original registration". This is because Section 72 of the Act states that "the registration of a person as a trade mark proprietor shall be prima facie evidence of the validity of the original registration". Page 302 lines 1-5. But note the comments at page 302 lines 10-15.

13.

"Capable of distinguishing means whether the mark can in fact do the job of distinguishing." Page 305 lines 38-39.

14.

"It must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark - or is almost a household word." Page 306 lines 37-39.

You probably didn't find these questions too difficult, but they should help you to feel comfortable with finding your way through published decisions - which at first sight are rather hard to digest!

Important TREAT is an important case, and still referred to. But you will see when you have read the CANON case, later in this Module, that the approach used by the judge here, in assessing whether there was a “likelihood of confusion” between the respective marks and goods, was not used by the ECJ. It is the ECJ’s approach which is now followed, not Jacob J’s.

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Headnotes The decision is reported in the very brief summary at the beginning of the law report you have been reading. Page 282, lines 6-53 and page 283, lines 1-33. This summary is known as the headnote. The headnote is a useful digest, although it is not a substitute for reading the full report.

Analysing a Reported Case You have now seen that a reported case includes a number of parts, including the headnote, a summary of the arguments, details of who appeared (the trade mark agents, solicitors or counsel), and the reported judgment (and, sometimes, a report of the decision made by a lower court in the same matter). Of these, the judgment deserves the closest inspection. It is very important to get into the habit of trying to extract the central reasoning which supports the decision - known as the ratio decidendi of a case. This is the part of the decision that is binding in law and will be referred to in other decisions. (The judge’s comments which do not form part of the judgment are known as obiter dicta.) You may find that the ratio decidendi is sometimes elusive - look for what the judge considers to be the essential facts - the points necessary to his or her decision, and the legal principles applied in coming to a decision. There is often much argument later on what the ratio decidendi was, especially if later judges disagree with the decision and do not want to follow it.

Please write a brief summary of what you felt to be the most important aspects of the TREAT case. What was the ratio decidendi? Use these notes as a basis for discussion with your trainer, once you’ve finished this Module. 10

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Mirage Studios and Others v Counter-Feat Clothing Company Limited and Another (The NINJA TURTLES case) We'll do the same analysis now with a Fleet Street Report (FSR). You should have with you [1991] FSR 145, covering the decision in the “NINJA TURTLES” case. This is essentially a “passing-off” case. (The Yellow Module covers the subject of passing-off in detail.)

As before, start by reading it through carefully, then answer the questions. 1.

Before whom was the case heard, and where?

What remedy was being sought by the plaintiff?

On what grounds was this being sought?

Who was the employee of the Counter-Feat clothing Company Ltd?

Did the judge decide that the original turtle drawings were copied by Kevin Collins?

Which decided case was considered by the judge in ruling whether to grant interlocutory relief?

Which factor was the public held to be aware of?

To which decision of the Supreme Court of New South Wales does the judge refer?

What was the reason for not taking into account the three English cases on which the defendant's barrister, Miss Vitoria, was relying?

Compare your answers with ours.

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Our answers:

The case was heard by the Vice-Chancellor, Sir Nicolas Browne-Wilkinson, in the Chancery Division of the High Court of Justice.

The plaintiffs were seeking an interlocutory injunction.

The injunction was being sought on the grounds of alleged copyright infringement and "passing-off".

He was Mr. Justin Smith (page 149).

No - he held that only the “concept” had been copied (page 151).

He considered the case known as AMERICAN CYANAMID.

Evidence showed that the public is aware of trade mark licensing.

He refers to the MUPPETS case - Children's Television Workshop Inc v Woolworths (New South Wales) Limited (page 156).

The previous cases referred only to misuse of names, whereas this case included the infringement of copyright drawings (page 159).

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CANON

Now look at the CANON case [1999] FSR 332, which you should have with you. This case No. C-39/97 is a “Referral” to the European Court of Justice (“ECJ”), by the German Federal Court of Justice. You can see this from the headnote’s references to the laws of Germany and the EU (as opposed to those of this country). The first thing you should notice is that the case is presented in a very different format from those you have just read. At the top, you will see eleven names listed. These are the members of the Chamber before whom the case was heard. Next, turn to the headnote (page 334 of the FSR). You will see seven persons listed. Axel Rinkler appeared for Canon and Wolf-W Wodrich and Joachim K Zenz appeared for Metro-Goldwyn-Mayer. These correspond to Counsel on both sides in an English case. But you will also see that Anne de Bourgoing appeared for the French Government, Oscar Fuimara for the Italian Government, Daniel Alexander (instructed by the Treasury Solicitor) appeared for the UK Government and Jurgen Grunwald appeared for the Commission. There is a reason for this. As we saw in the Red Module, the purpose and function of a “Referral” to the ECJ is different from that of a decision of the English – or German – national courts. Under Article 234 EC, the role of the ECJ is limited to providing the national court with guidance on interpretation necessary to resolve the case before it, while it is for the national court to apply the rules of Community law, as interpreted by the Court, to the facts of the case under consideration. So the reason that all these people were heard was because the governments in question felt that the issue being heard was something which would have a bearing on national procedures in their respective countries. Note that there are two separate reports here. The first is the “Opinion” of Advocate-General Jacobs, issued on 2 April 1998. The second is the “Judgment” of the Court, delivered on 29 September 1998.

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You should remember from the Red Module that this is how referrals to the ECJ work. First there is the hearing. Then the report of the hearing is remitted to the Advocate General for his Opinion. Then, when the Court had considered the Advocate General’s opinion, it issues its Judgment. Sometimes, the “Opinion” and the “Judgment” are reported separately, and you will find them in FSRs some time apart.

Once you have finished reading the case, please answer the following questions.

Who first opposed whom, and why?

What was the main question asked, and by whom?

Where was the meaning of “confusion” previously considered by the ECJ?

What was the main view of the UK on this issue, and what did the Court think of it?

What was the Court’s answer to the question?

Now take a look at the answers.

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The answers

Canon opposed an application made in 1986 by MGM to register the word mark CANNON for video tape cassettes and production of films on the grounds that it was confusingly similar to the opponent's registered mark CANON for cameras and film recording and transmitting devices.

The main question was “May account be taken, when assessing the similarity of goods or services covered by the two marks, of the distinctive character, in particular the reputation of the mark with the earliest priority… in particular in such a way that likelihood of confusion within the meaning of Article 4(1)(b) of the Directive must be taken to exist, even if the public attributes the goods and/ or services to different origins?” The German Federal Court of Justice asked the question.

The meaning of “confusion” in Article 4(1)(b) of the Directive had already been considered by the ECJ in its judgment in Case C-251/95 Sabel v Puma [1998] RPC 199.

The UK advocated an objective, independent assessment of the similarity of the goods or services (that is, an assessment made without regard to the nature or reputation of the earlier mark). The Court disagreed with this approach, confirming (following Sabel v Puma) that “The likelihood of confusion must… be appreciated globally, taking into account all factors relevant to the circumstances of the case”.

On a proper construction of Article 4(1)(b) of the Directive, the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion.

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Useful Shortcuts in Studying and Using Case Law

As a general rule, you should avoid trying to use too many shortcuts when studying case law.

However, something you should bear in mind is that there may be more than one published decision on a case. For example, it may start in the Trade Marks Registry, be followed by an appeal to the High Court, thence to the court of Appeal and (rarely) to the House of Lords - and even to the European Court of Justice. If this happens, all you are likely to need is the Report of the final decision in the highest court - which will normally include a helpful summary of the preceding actions.

Various summaries of case-law are published from time to time, including case reports in the European Intellectual Property Review (“EIPR”), the Annual Review published by INTA (the International Trademarks Association), and by the Institute of Trade Mark Agents and the Chartered Institute of Patent Attorneys. These can be very useful for a quick reference. However, beware of becoming too dependent on these; they don't usually give the full background to a case and - occasionally - don't include the most important part of the decision. You should use them as reminders of cases you know, not as the sole source of your knowledge!

A word of warning The three cases we've looked at here are relatively recent ones. However, you will be expected to know about much earlier cases as well - including cases from the nineteenth century. These can be much less clear to read, with language that sometimes seems obscure. Apply the principles you've been learning in this Module and also read some of the later cases in which the earlier case is cited. You'll get used to them and to making the best use of them.

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You are now almost at the end of this Module.

In other Modules we refer to more reported cases, as they influence other aspects of trade mark law and practice. When you come to these, make a note of them - we only refer to them in outline, but you should find the full Reports and take time to read them.

Finally, as usual, this Module finishes with a short quiz. Either now, or when you've finished the quiz, don't forget to make a note of any points you want to discuss with your trainer.

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Test Yourself

Reported decisions often include references to decisions of lower courts in the same case. Which do we regard as the binding decision?

Imagine you are acting for a client at an Opposition Hearing before the Assistant Registrar. You want to refer to case law precedent to support your argument and you have already supplied the Assistant Registrar with a list of cases on which you will be relying. You now want to refer the Assistant Registrar to the part of the decision that directly supports your case. How will you refer her to this?

Which judgments made abroad may be reported in this country and are binding on the UK courts?

In which Division of the High Court were the UK cases we've looked at heard?

List as many publications as you can think of where you might find reports of trade mark cases. (Think about what might be available at your own office, as well as those we've discussed here.)

What is the summary of a decision, included within a report, known as?

Compare your answers with ours on the next page.

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Our answers 1.

The binding decision will be that of the Court which heard it last - the highest court.

You can refer the Assistant Registrar to the page number and the line number covering the chosen point in the report in question - or copy and highlight the relevant paragraph in the case.

Decisions of the European Court of Justice are binding in the UK.

The cases were both heard in Chancery Division.

We thought of these FSRs (Fleet Street Reports) RPCs (Reports of Patent Cases) CMLRs (Common Market Law Reports) ETMRs All-England Law Reports The Trade Marks Journal (even if it doesn't give full details, it will tell you where decisions have been published). The OHIM Journal The ITMA News Review The CIPA Journal The European Intellectual Property Review Newsletters circulated by firms with intellectual property specialists, such as solicitors Newspaper law reports - for example, the "Times" or "Independent"

The summary is known as the headnote.

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YELLOW MODULE

Passing-off

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In other Modules, we look at registered trade marks and the rights conferred by registration.

In this Module, we look at the rights that proprietors may have in unregistered marks.

To complete this Module, you will need a copy of The Trade Marks Act 1994.

When you have completed this Module, you will have: listed the forms that damage to goodwill may take; listed the characteristics which must be present for a successful passing-off case identified the person who may take action to prevent passing-off; and listed the remedies available to a successful claimant.

This Module will take approximately two days to complete.

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The Trade Marks Act 1994

Start by looking at section 2(2) of the Trade Marks Act 1994. You will see that there is no infringement, under this Act, of a mark that is not actually registered – but that the Act does not alter the law relating to passing-off. We mentioned this briefly in the Red Module. Our legal system in the UK derives in part from what is known as “common law”. Put simply, it means law that is derived not from legislation, but from what people have actually been doing (sometimes called “custom”), and, more importantly, from precedent. Precedent is the body of law taken from earlier court decisions on points of law in the same field. Common law is thus largely judge-made law covering issues which have not been codified into statute law.

Think for a moment about other countries that might also have legal systems which place great importance on precedence. Please make brief notes on which countries you think these are. Then also please make brief notes on what you think the alternative to law based on precedence is, and the countries that might use such a system. Then read on.

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“Common law” countries include, as well as the UK, the US, Australia, most Commonwealth countries and most other countries which were once British colonies.

We can refer to countries whose systems are based largely on statute or legislation as “civil law” countries (or as “Roman law” countries, as the laws derive from Roman law). These include countries such as France, Italy, Russia, and most countries whose legal systems have been influenced by these countries.

For trade mark owners, the main difference between the systems is that In common law countries, rights in a trade mark are acquired primarily through use, i.e. common law rights They do not depend wholly on registration under legislation such as the Trade Marks Act 1994. The first person to use a mark may have better rights to that mark than a later registrant. Whereas In civil law countries, rights in a trade mark are usually acquired only by registration. No matter who uses a trade mark first, it is normally only the first person to apply to register the mark who will have enforceable rights, and who may be able to stop the prior user. (The only exceptions may be for “well-known” trade marks. You should remember from the Red Module that the Paris Convention provides for the protection of these.) Note Some countries also have laws of unfair competition. (These are outside the scope of this Manual.)

Important As we will see later on in this Module, rights granted by registration have become increasingly important to UK trade mark owners, as our law moves closer to that of other EU countries. You will need to bear this in mind both when advising your clients, and when taking exams.

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A UK trade mark registration gives a proprietor the right to exclude others from using a registered mark in relation to the goods or services in respect of which it is registered. We look at this right in detail in the Blue Module.

What rights does the owner of an unregistered mark have? Section 56 of the Trade Marks Act 1994 provides for the protection of well known trade marks, as defined by the Paris Convention. (You have read about this in the Red Module.) Apart from this provision, however, this is a very difficult question to answer precisely because, as we said, these rights are not written into any legislation. This is one reason why proprietors often prefer to register marks rather than rely on the less clearly defined option of depending on common law rights. But owners of unregistered marks may have a very effective common law right – that of taking action to prevent “passing-off” against unauthorised users of their marks.

What is an Action for “Passing-off”? Before people were able to register their trade marks, they still wanted, as you will appreciate, to be able to take legal action against people who copied their valuable trade marks. The common law courts developed a remedy based on the law of tort to prevent this kind of activity. A tort is a civil wrong (as opposed to a criminal act), independent of any contract or relation of trust between particular people. This type of copying is called “passing-off”; a term that was first used in1842.

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Who has the right to prevent “passing-off” – and how do they acquire that right? Someone must be in business or in trade to have the right to take “passingoff” action. There are three important elements required for someone to bring a successful case for passing-off: Reputation. Misrepresentation. Damage. (However, they do not necessarily need already to have suffered damage. If they can show that they are likely to suffer damage, they may be able to start a quia timet action – that is, an action where someone fears something might happen.) An important case The most important case dealing with this, at the time of writing is Reckitt & Colman Ltd v Borden Inc [1990] 1 RPC 341 1 (the Jif Lemon case). Lord Oliver identified the following necessary elements for the person bringing the action: “First, he must establish a goodwill or reputation attached to the goods or services... Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether intentional) leading or likely to lead the public to believe that the goods or services offered by him are goods or services of the plaintiff... Thirdly, he must demonstrate that he suffers [loss or damage as a consequence of the erroneous belief that the goods or services of the defendant are the goods or services of the plaintiff].” Please make a note to read this case when you have finished working through this module.

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Important There should be actual or potential damage if the court is to grant a remedy (although in practice, damage, or the likelihood of damage, is usually inferred by the courts).

What sort of damage might occur?

Think now about what forms of damage a trade mark owner might suffer. (Some are harder to prove than others.)

Make a list of your ideas, then compare it with ours on the next page.

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As an illustration, our list of the possible forms of damage shows them in the context of a hypothetical chocolate business owned by you, although you only need to have listed your ideas in outline.

Loss of sales to another business Another shop starts up under your trade mark. Your customers, either through confusion or assuming the new shop to be another branch owned by you, take their custom to the new shop – which then keeps their custom. You lose sales.

Loss of reputation and goodwill The newer business makes cheap chocolates with unpleasant synthetic flavourings. People don’t like them and stop buying them. A bad reputation spreads, and people stop buying your chocolates because they believe that they are connected with the cheap ones. You have suffered damage to your reputation and goodwill.

Loss of licensing opportunities You already have shops in Glasgow, but do not have any shops in Edinburgh. But you have just licensed someone else to make and sell chocolates under your trade mark there. Another, unconnected, business starts up just outside the city, making chocolates under your trade mark – thus spoiling your licensee’s business, as well as causing you to lose the licence fee you were going to charge. This type of damage might also apply if you were planning to set up franchises.

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Some fundamental points

There are some further points to note about the right of action to prevent “passingoff”.

To establish a right of action, proprietors must: Use the trade mark or other distinguishing feature in the course of their business. Acquire reputation through using the mark. Show that the public or trade recognise their goods or services by reference to the mark (a “trade connection”). Have goodwill in the UK. Show that damage will result from the acts complained of. Show misrepresentation.

So you can now see that “goodwill” is essential. But what is it? You may be able to think of a definition of your own, but in a case known as Müllers Margarine (IRC v Mullers Margarine [1901] AC 217), it was defined as the “… attractive force that brings in custom. It is what distinguishes an old established business from a new business at its start.”

Goodwill is not a tangible asset. But it is nevertheless a very important business asset – which is why the courts are prepared to protect it.

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Important

Please note Only the person with the reputation, and whose business has been damaged, can take action to prevent “passing-off”. The person who has been deceived does not have this right. (However, the deceived person may have other rights depending on the circumstances – under the Trade Descriptions Act 1968, for example.)

There must be misrepresentation By this, we mean that the trade mark owner must show that the action complained of misrepresents the goods or services of the third party as those of the owner.

Misrepresentation can be straightforward – simply using a mark similar to the trade mark owner’s, targeted at the same customers, may be enough. But there must be, at least implicitly, an element of wrongdoing in the misrepresentation. Misrepresentation is a knowing act by a third party calculated to injure, or which actually does injure, the claimant’s goodwill.

On the next page, we give you some examples of actions which might constitute “passing-off”. Read the examples, and then decide whether you could take action to prevent “passing-off” in each case. Write down your answers, giving your reasoning.

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You are a goldsmith, making expensive jewellery for personal commissions. You have been trading for some years. You notice a new stall in your local street market, selling plastic beads, nickel earrings and similar goods – under your trading name. Then a customer phones you to cancel an order because she can “get it much cheaper in the market”.

You are a luggage designer and manufacturer. Your range of bags and suitcases are all in a colour combination that is unique to you, and are carefully designed with co-ordinating wheels, handles, straps and luggage labels, all extra strong and designed to withstand the hardest wear by baggage handlers and airport carousels. They are labelled with unique star-shaped swing tickets and a star shaped logo, and you use a typeface designed for you, which is featured prominently. You are somewhat surprised to find that Taiwanese imports have just become available in the UK under a Taiwanese brand name, copying all your special features except your name. You carry out some research and discover that wholesalers, retailers and even consumers are all aware which products originate from you, and which from Taiwan. No-one has actually bought an import believing it to be one of your products.

Your house is called DUNTRADEMARKIN and you are very pleased with yourself for having thought of such an original name. But then your new neighbour, two doors away, puts a name plate on his front door – he, too, has called his house DUNTRADEMARKIN. You both soon find yourselves getting each other’s post and, when your birthday cheque from your grandmother fails to arrive, you suspect the worst.

For the last five years, you have been selling computers in high street retail outlets. Your shops and the company are called TIBBLES after your cat. Someone tells you that they weren’t very impressed with their TIBBLES word-processing package, and won’t be recommending your goods. As you don’t sell word-processing software, you investigate promptly, and discover that someone else has started selling a TIBBLES software package by mail order. When you threaten to take action to stop them, they point out that they too have a cat called Tibbles, and had never previously heard of your business.

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You are a French clothes designer, displaying your haute couture collections in Paris. You also have shops in Paris, Brussels and Rome, selling your own label clothes. You hope to open one shortly in London, as you currently have no UK establishment – although many of your customers are English and your designs feature regularly in British fashion magazines. Then one of your customers tells you that she has seen a new shop in Bond Street, under your name, selling clothes. You know nothing about this shop.

You design and make specialist ceramic figurines. They are fairly expensive and are becoming regarded as collectors’ items. At a craft fair, you find a company distributing leaflets which include photos of your work. The company is telling people it can make items just like them.

Compare your notes with ours on the next page.

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How did you get on?

This is a fairly straightforward case. You would almost certainly be able to bring a successful action against the stallholder. (However, you could choose not to do so – you may be able to ask your local Trading Standards Officer to take action.) Note that the goods do not have to be inferior to yours for a “passing-off” action to succeed. However, if you can show that they are, your case will be stronger.

If no-one has actually been deceived or confused, or is likely to be, it will be very difficult for you to take action successfully.

“Passing-off” has not occurred here. You are not using the name in business, and there is no goodwill in the name of a house.

You may have a case here. You do not need to establish fraud to succeed in a “passing-off” case. A confusing name may be adopted quite innocently, but it is not a defence to “passing-off” if confusion and damage occur.

You might well have a case here. Although you do not have a UK business establishment, you do have customers here – and, therefore, goodwill in this country.

You may have a case here. A case of this type has been deemed to be “passing-off” – make a note to ask your trainer for a copy of Bristol Conservatories v Conservatories Custom Built Limited [1989] RPC 15 when you have finished this module. This type of activity – misrepresenting the claimant’s goods as those of the defendant – is sometimes called “reverse passing-off”.

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Precedent

“Passing-off” cases are judged, as we said earlier, on precedent (earlier decided cases). And new law is being made all the time – particularly if a case reaches the House of Lords. Decided cases provide useful guidelines, but will not always help you, as a professional adviser, to predict what the outcome of a legal action will be.

Examples

We have seen that a claimant needs to be able to show that he or she has goodwill in this country to succeed in “passing-off” proceedings But A judge today may take into account the effects of modern communications, particularly the Internet, and the way the reputation of a product of service can be spread to the public by the media, even if no sales have taken place in this country.

We have seen that a claimant must have a relevant business to protect But Loss of licensing of franchising opportunities may nowadays be taken into account.

YELLOW The right to take common law action covers whatever features a trader is using to distinguish his or her goods or services. This can include The shape of an article – for example, the shape of a bottle or container Colour schemes – for example, coloured medicine capsules Combinations of letters and numbers, such as WD40 Descriptive marks Personal names Geographical names Pen names. The name of, essentially, a recipe or of a region know for producing particular products - for example, ADVOCAAT, SHERRY, CHAMPAGNE, Swiss chocolate (food and drink feature heavily in passing-off cases!) If a group of traders all have a collective goodwill in the same name, or description of goods, they may be able to take action. Cases where this has happened include CHAMPAGNE SHERRY ADVOCAAT (Warninck v Townend, [1980], RPC 31). A representative trader within the group may initiate the action to protect the collective goodwill. Most of these are registrable as registered trade marks, but some, such as geographical names, may be difficult to register without substantial use, as we see in the Khaki Module. So traders may have to rely on their common law rights if they wish to take legal action to prevent someone else using their valuable trade or service marks. (Although in some cases, if the proprietor does not have enough use of the mark to be able to register it, there may also not be enough use on which to base a “passing-off” action.) In the case of geographical names, the courts will often allow the defendant to carry on using the name as an indication of origin, provided that the use does not amount to “passing-off”.

Personal names It can be difficult to bring successful actions for “passing-off” where personal names are concerned – particularly if, for example, the claimant and defendant have the same personal name, which both are using as a trade mark.

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A further important difference between an infringement action and a common law action for “passing-off”, as you have probably realised by now, is that the common law action can be wider in scope. A proprietor can only take action against infringement if the other person has used the same, or a confusingly similar mark, under the circumstances listed in Section 10 of the Trade Marks Act 1994; in passingoff however, what matters is whether a misrepresentation has injured another’s goodwill – in which case, the third necessary element, damage, practically inevitably follows.

Look at section 10 of the Trade Marks Act 1994 (as amended) now.

These circumstances do not necessarily all have to apply in a “passing-off” case. If the proprietor can establish a risk of confusion and prospect of damage, the fact that the defendant trades in a different field is irrelevant.

So the right to bring a “passing-off” action can supplement registered rights in some cases.

Next, we will look at a leading case that concerns passing-off.

YELLOW The elements of “passing-off” The JIF LEMON case This case (Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873), involved plastic lemon-shaped containers for lemon juice. The defendants had attached labels to their own plastic lemons, clearly identifying themselves. However, evidence showed that the public associated the containers (which were previously the only ones of this type on the market) with the claimants – even though they did not know the proprietor’s actual identity. The “passing-off” case succeeded. However, the judgment stressed that the decision did not give the claimants a monopoly in sales of juice in lemon-shaped containers – the defendants had simply not taken sufficient steps to distinguish their product, and should have attached more prominent labels to their goods. In the JIF LEMON case Lord Oliver identified the test for establishing passing-off: “First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff... Third, he must demonstrate that he suffers or... that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.” This is a very useful summary and attorneys often refer to it, so we recommend that you take some time now to make a written note of these points.

We do not always rely solely on these criteria, and there are some additional points to take into account – you may have included them on your list. They include: The person bringing the action must have goodwill in this country. Mere reputation is not sufficient. The defendants should be making a misrepresentation about goods or services which they themselves are offering. The claimants must be entitled to bring the action because they own the right which they wish to protect – remember, no-one else can bring an action for “passing-off”, not customers and not even franchisees or licensees (although they may have other enforceable rights).

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Exceptions to “passing-off”

Certain activities involving the use of names or distinctive features may not be protected under the law of “passing-off”. Each case is decided on its own merits, but possible examples include

Fictional characters The proprietors of rights in the television character KOJAK could not stop use of the mark KOJAKPOPS for lollipops. The defendants had prior use of the mark for those goods. In another, somewhat older case, Sir Arthur Conan Doyle could not stop a magazine from using the Sherlock Holmes character in one of its stories. (Note that a 1972 decision of the Hong Kong Supreme Court takes a slightly different view. In that case, the Court held that a fictional character – the “One-Armed Swordsman” – may be part of the goodwill of a film producer – but no-one had property in the type of film. The decision was not binding in this country, but such decisions may be taken into consideration sometimes.)

Titles of books, plays and so on. There is normally no property in a title.

Very well-known marks Occasionally, a mark is too well-known for the action to succeed. As you will remember, it is essential for the proprietor to be able to show a risk of damage – and the risk of damage is sometimes deemed unlikely. So, for example, the proprietor of the MISS WORLD CONTEST couldn’t stop use of THE ALTERNATIVE MISS WORLD as a title for a spoof beauty contest.

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We have talked here about the way that the courts refer to previous cases. In the White Module, we looked in more detail at using case law. However, because it is so useful here, we’ll now look briefly at two more passing-off cases to which you will find references in later decisions.

Reddaway v Banham [1896] 13 RPC 218

The claimant (referred to at that time as the “plaintiff”) manufactured and sold belting under the mark CAMEL HAIR. The defendant, who had been employed by the claimant, manufactured similar belting which he began to call CAMEL HAIR. The defendant’s goods were actually made mainly from camel hair. However, the fact that the defendant’s mark was descriptive of the goods did not mean that the claimant’s action failed. The High Court stopped the defendant from continuing to use the name in a way which would make customers believe that they were buying the claimant’s goods. In his judgment, Lord Herschel said that the words “camel hair” had acquired a secondary meaning, distinguishing the claimant’s goods. He also referred to an earlier judgment, stating that

“No man can have any right to represent his goods as those of another person.”

Compare this with the OVEN CHIPS case (McCain International v Country Fair Foods 1981). The claimant’s trade mark OVEN CHIPS was held to be “ingenious and apt” and had not been used before – but it was also descriptive and with no secondary meaning. The action failed.

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Anheuser-Busch v Budejovicky Budvar Narodni Podnik (“BUDWEISER”) [1984] FSR 413 This case has a long history. A Czech town once called, in German, Budweis was celebrated for its brewing. The American claimants, Anheuser Busch Inc, based their BUDWEISER beer on the Czech original, and sold it in the US. The Czech defendants, Budejovicky Budvar, were based in Ceske Budejovice – the Czech name for Budweis – and had used the name BUDWEISER for their beers for many years in Europe. Until 1980, the US company made only very limited sales of their beer in the UK, mainly to US diplomatic and military personnel. They did not sell to the British public at large. From 1973, the Czech company imported and sold its beer in the UK – and inevitably, the public became confused about whose beer they were buying. The American company initiated legal action to try to prevent the Czech company from allegedly passing-off their beer as that of the Americans. However, the court held that the limited sales by the Americans of the US beer, at that time, through US military and diplomatic outlets, did not constitute a business in ths country – and so the action failed. Please note, however, that this is a very unusual case.

You will find it helpful to read these cases (and others) when you have finished this Module. Make a note now to ask your trainer for copies later. These will give you more facts than our very brief overviews can provide.

We will shortly take a look at how to begin a passing-off action. First, however, please think about what you have just learned about passing-off, and compare it with what you have already learned about rights in registered trade marks. Please make notes as to why it is preferable, where possible, for someone to have a registered trade mark to rely on, rather than trying to rely on passing-off action to protect a trade mark. Then compare your notes with ours.

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You should have covered these points.

Passing off action

Relies on evidence of reputation Relies on evidence of confusion Can be very expensive

A trade mark registration

Is a statutory right to stop others from using the mark Is often cheaper to enforce

If your ideas differed greatly from ours, please make a note to discuss them with your trainer when you have completed this module.

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Commencing a “passing-off” action

We cover “Claim letters”, pleadings, and an outline of court procedure in the Blue Module. As background reading, you will find chapter 121 of the Trade Mark Handbook helpful. Make a note to look at it when you have finished working through this Module.

You are nearly at the end of the Yellow Module. As you will have realised, “passingoff” is a very wide subject and this Module is only an introduction.

Next time you are talking to your trainer, you might like to discuss any cases of “passing-off” he or she may have dealt with, as well as the English legal system and court procedure generally, since we do not have time to cover it here.

Your trainer should also be able to recommend some further reading for you.

On the next page, you’ll find the usual quiz to work through, to see how much you remember.

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Test Yourself

A proprietor of a trade mark wants to take action to prevent a case of passingoff. However, there are some points he must demonstrate about their own use of the mark before an action can succeed. What are they?

Who may take action to prevent passing-off?

In a well-known case, the main judgment included a useful summary of the elements which should be present for a successful passing-off case. What is this case known as?

What are the three important elements required for someone to bring a successful case for passing-off?

Do the UK courts normally consider that there is property (and hence a right to go to court to stop use without permission) in a) Names of fictional characters? b) The shape of a container? c) Titles (for example, of films)? d) Particular colour combinations?

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Name two cases that dealt with descriptive marks, referred to earlier in this Module.

Now check your answers.

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The answers.

The proprietor must be able to show that he or she has used the trade mark in business, has goodwill in the UK relating to the trade mark and that the public or trade recognize the goods or services.

The person whose business interest was damaged can take action.

It is the ADVOCAAT case - Warninck v Townend, [1980], RPC 31.

Reputation Misrepresentation Damage

a) No b) Yes – if it distinguishes the owner’s goods and the owner has built up a reputation in the UK c) No d) Yes – as b)

The two cases we referred to were Reddaway v Banham [1896], where it was held that the mark CAMEL HAIR BELTING had acquired a secondary meaning, and McCain International v Country Fair Foods [1981], where the mark OVEN CHIPS was held to be “ingenious and apt”, but to have no secondary meaning.

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KHAKI MODULE

Distinctiveness and Absolute Grounds

KHAKI

In this module, we look at a key concept – that of distinctiveness. You need to understand distinctiveness in a trade mark context, both to progress further in your studies, and also to be able to advise your clients in due course. We introduce you to some of the Trade Marks Registry’s helpful guidance in the Trade Marks Registry Work Manual. Before you start this Module, you should have worked through the White Module.

To complete this Module, you will need The Trade Marks Act 1994 TREAT case (British Sugar Plc v James Robertson & Sons Ltd, [1996] RPC 281 CHIEMSEE case (Windsurfing Chiemsee Produktions v Huber [1999] ETMR 585 ECJ) Trade Marks Registry Practice Amendment Notice 1/06 The Trade Marks Registry Work Manual, Chapter 3 – Examination and Practice (July 2004).

When you have finished this Module, you will have: read relevant sections of the Trade Marks Act 1994; identified examples of trade marks to which the Trade Marks Registry will raise prima facie objections; and identified the factors that examiners consider when assessing whether a name is liable to be used as a designation of geographical origin.

This Module will take about a day to complete.

KHAKI

Definition

We have already seen, in the Red Module, that a trade mark is a “sign” which distinguishes the goods or services of one trader from those of another. This is the case whether or not the trade mark is registered.

In the wording of section 1(1) of the Trade Marks Act 1994, a “trade mark” is defined as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.

There is no corresponding definition of the word “distinctive” – despite the fact that the concept is so important.

Section 3

However, look at section 3(1) (b) of the Trade Marks Act 1994 (as amended), and note what it says. 3 (1)

Absolute grounds for refusal of registration “The following shall not be registered … (b) trade marks which are devoid of any distinctive character … Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”

So it follows from this that a “distinctive” trade mark is one which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

KHAKI It also follows from section 3(1) that a trade mark may: be inherently distinctive; or have acquired distinctiveness.

Now read Parts 7.1 to 7.7 of chapter 3 of the Trade Marks Registry Work Manual. This sets out how the Trade Marks Registry interprets sections 1(1) and 3(1) of the Trade Marks Act 1994.

Inherent distinctiveness A trade mark which is “inherently capable of distinguishing” (inherently distinctive) is one which, by its nature, bears no relation to the character, or quality of the goods or services. Nor does it make any reference to the producer, or geographical locale, or any of the other items listed in sections 3(1)(c) and 3(1)(d) of the Act.

Please look at sections 3(1)(c) and 3(1)(d) of the Trade Marks Act 1994 (as amended) now.

This position has not changed for many years. It is substantially the same as under the Trade Marks Act 1938, although we do have guidance from several ECJ cases.

We will look at it further on the next pages.

KHAKI Firstly, a distinctive trade mark cannot be “descriptive” of the kind quality quantity intended purpose value of the goods or services on which it is used. You will often find that your clients have a very different view as to what makes a trade mark distinctive from others. They think that a descriptive mark is distinctive, and that a descriptive mark will prove ideal for their goods. In fact, as you will need to explain, the more descriptive a mark is, the more it becomes an ordinary description of the goods. The result is, for example, that an order given for goods under the mark could result in anyone’s goods answering to that description being sent to the purchaser. Consider an extreme example. If the word “Good” was used as a trade mark for shoes (whether or not registered) and you order “A pair of good shoes, size 8” – you will probably get the best shoe the retailer has in stock, regardless of whose make it is. (This example is from a book called “Elements of Trade Mark Law and Practice” by WM Faulkner, Chief Executive Officer of the Trade Marks Registry, 1944-1950. It was last reprinted in 1979 as a fourth (revised) edition, and of course deals with the law under the Trade Marks Act 1938. But if you are able to get hold of a copy, it is still well worth reading.) We will look in more detail at marks which the Trade Marks Registry considers nondistinctive in the Jade Module. For the time being, please note that objections can be raised: under section 3(1)(b) because a mark is non-distinctive; under section 3(1)(c) because it is descriptive; and under both (descriptive marks will generally also be objectionable as being non-distinctive).

KHAKI

Some examples

Invented words Invented words are always distinctive. But the word must clearly be invented, not, for example, a simple mis-spelling. We also take into account how the word is pronounced, as well as how it is used in writing. Apply this in relation to the goods or services on which the mark is used. For example, ORLWOOLA is not invented if applied to “all wool” garments. Perhaps the best-known invented word mark is KODAK.

Ordinary words Normal English words may also be distinctive, provided that they have no direct reference to the character or quality of the goods concerned. One good example is the trade mark CAMEL for cigarettes. Another is LOTUS for cars.

Surnames Common surnames used to be a category of mark which was specifically stated to be non-distinctive. This is no longer the case, but until recently, the Registry would object to a common surname under the general provisions of sections 3(1)(b) and 3(1)(c). As with geographical names, this is because the UK courts have long held that people should, generally speaking, be free to set up in business under their own names. However, the ECJ addressed the question of the distinctive character of surnames in case C-404/02 Nichols plc v Registrar of Trade Marks (16 September 2004) [2004] ETMR 48. Surnames are now registered on a “first-come, first-served” basis. Existing traders using the same name are left only with the safeguard of section 11 of the Trade Marks Act 1994, which we will talk about later on.

KHAKI

Now please read part 20 of Chapter 3 of the Trade Marks Registry Work Manual, which sets out current practice.

Then try to answer these questions, from memory as far as possible.

Is the Trade Marks Registry likely to object to surnames that have other descriptive meanings?

Does the Trade Marks Registry object to single forenames?

Under what other circumstances is the Trade Marks Registry likely to object to the registration of a surname?

Now compare your answers with ours.

KHAKI

How did you get on?

Yes, but this depends on the circumstances. The example given is that the surname BROWN is not acceptable in relation to sauces or paints, because it is descriptive of types of the goods. However, SMITH would probably be registrable under the new practice for dress-making, for example (unless paragraph 3 below applies).

Not usually, unless the goods are the type that might have a name actually written on them – examples are mugs and bracelets.

If, at the date of application, the relevant public’s expectation was that there would have been numerous undertakings trading in the relevant sector under the name in question, with the result that the public could have had no expectation that relevant goods or services under that name would originate from any particular undertaking.

Now read on.

KHAKI Acquired Distinctiveness

As we saw above, “a trade mark shall not be refused registration … if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”

The TREAT case You read the TREAT case (British Sugar Plc v James Robertson & Sons Ltd, [1996] RPC 281) in the White Module when studying how to read and refer to case law. You should have a copy with you.

Please refer back to your copy of the TREAT decision, and re-read pages 305 & 306 in the RPC edition (the last two pages). Note that Mr Justice Jacob (as he then was) said, “If a mark on its face is nondistinctive (and ordinary descriptive and laudatory words fall into this class) but is shown to have a distinctive character in fact then it must be capable of distinguishing.” He goes on to say, “Thus, capable of distinguishing means whether the mark can in fact do the job of distinguishing… The scheme is that if a man tenders for registration a sign of this sort without any evidence of distinctiveness then he cannot have it registered unless he can prove it has a distinctive character. That is all.” The following sentences are also very important. Mr Justice Jacob says, “There is no pre-set bar saying no matter how well it is proved that a mark has become a trade mark, it cannot be registered. That is not to say that there are some signs which cannot in practice be registered. But the reason is simply that the applicant will be unable to prove the trade mark has become a trade mark in practice – “Soap” for soap is an example. The bar (no pun intended) will be factual not legal.”

(We look in more detail at preparing evidence of distinctiveness in the Silver Module.)

KHAKI

The CHIEMSEE decision of the ECJ

For the moment, please now read the CHIEMSEE decision of the ECJ (Windsurfing Chiemsee Produktions v Huber [1999] ETMR 585 ECJ). In particular, please read numbered paragraphs 51 through to 54 inclusive. This is the section that begins “In assessing the distinctive character of a mark…”

Trade Marks Registry practice on geographical marks

Now read part 35 of Chapter 3 of the Trade Marks Registry Work Manual (ignoring for the time being paragraph 35.9, which covers collective and certification marks). Then try to answer these questions, from memory as far as possible. 1.

What factors do examiners consider when assessing whether a name is liable to be used as a designation of geographical origin?

What happens if the goods in question are natural produce?

When does the Trade Marks Registry object to the names of seas as trade marks?

Now compare your answers with ours.

KHAKI

Check your answers. 1.

“a) Whether the geographical location has a reputation for the goods/services listed in the application; b) If not, whether the characteristics of the geographical location concerned indicate that the place is, or in the future is liable to become, a geographical source for the goods/services listed in the application c) The extent to which the location is known to the relevant calls of persons in the UK – and what it is known for.”

“The names of places which are likely to be the source of natural produce are unlikely to be registrable as trade marks for such goods, even if the place identified by the mark has no specific reputation.” However, if a place is geographically small, with a small population, the Trade Marks Registry may take a more relaxed approach, particularly if the goods are processed natural produce, rather than unprocessed.

When the name of the sea characterises the location of the services or goods.

Trade Marks Registry practice The Registry’s practice when it examines marks on absolute grounds for refusal is set out in Chapter 3 of its Work Manual.

Spend some time now reading parts 16, 17, 18, 19, 21, 23, 29 and 42 , but do not read about relative grounds yet. We will deal with those in another Module. Take your time reading the material, as you will need to be familiar with the Registry's practice, both for day-to-day trade mark work and for your examinations.

KHAKI

Now please read Practice Amendment Notice 1/06 (available on the Intellectual Property Office website).

You are almost at the end of this Module.

As always, spend some time reviewing what you have learned while working through the Module, before moving on to the final quiz.

You will certainly need to discuss the concept of distinctiveness with your trainer, after you have finished this module.

You may also want to return to this module after you have worked through the Orange and Silver Modules (which deal, respectively, with prosecuting trade mark applications, and evidence of distinctiveness).

Now try the quiz.

KHAKI

Test yourself

In the CHIEMSEE decision, which factors is it said may be taken into account when assessing the distinctive character of a mark?

How does section 1(1) of the Trade Marks Act 1994 define a trade mark?

Your client wishes to file a trade mark that is, in fact, a slogan. Under what circumstances is it likely to attract an objection under section 3(1)(2)?

Your client, Mr Samuels, wishes to register the letter S in respect of men’s clothing. What advice would you give him?

KHAKI

The answers

the market share how intensive geographically widespread long-standing use of the mark has been the amount invested in promoting the mark the proportion of the relevant class of persons who identify the goods as originating from a particular undertaking statements from chambers of commerce trade or professional associations

“Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.

If it is “comprised of a word combination that an average consumer would regard as a normal way of referring to the goods or services, or of representing their essential features”.

He is unlikely to be successful – “S” is used as an indication of size for clothing, so it is likely that the Trade Marks Registry would regard it as nondistinctive.

ULTRAMARINE

ULTRAMARINE MODULE

Introduction to Prior Rights and Relative Grounds

ULTRAMARINE

Before you start this Module, you should have worked through the White, Yellow and Khaki Modules.

In this short Module, we take an introductory look at prior rights in trade marks, and the relative grounds on which the Trade Marks Registry may raise objections to an application.

In later Modules, you will build on what you have learnt here.

To complete this Module, you will need a copy of The Trade Marks Act 1994 The Trade Marks Registry Work Manual, chapter 3 (for the latest revision, please see Practice Amendment Notice 11/06 on the Intellectual Property Office website)

When you have completed this Module, you will have Read relevant sections of the Trade Marks Act 1994 Listed areas where you may have to take into account the existence of prior trade mark rights Identified categories of trade marks in which there may be earlier rights.

This Module will take half a day to complete.

ULTRAMARINE At the time of writing, there are proposals to abolish the Registry’s power to object to, and refuse, an application on the basis of relative grounds. Even if this abolition takes place, an understanding of the law concerning relative grounds will be essential, because of its relevance to oppositions and invalidation proceedings, infringement actions, and in advising clients generally. (We talk about these matters in other Modules.)

What do we mean by a “prior right”? If two people claim rights in the same trade mark or confusingly similar trade marks, then the person whose trade mark is older by virtue of, depending on the circumstances, either Earlier use or Earlier registration has the prior right (or “earlier” right).

Relative grounds The Trade Marks Registry may object to an application because the trade mark in question conflicts with prior right belonging to someone else. This is known as an objection on relative grounds, because the Trade Marks Registry is concerned with how the trade marks relate to each other. We can consider which trade mark has the earlier right, which trade mark may be defended from attack by the owner of the other, and so on. (Other grounds for objecting to trade mark applications – for example, that they are prohibited from registration under Section 3(1) of the Trade Marks Act 1994 – are known as absolute grounds, and we deal with these in the Khaki Module.)

The Trade Marks Registry Work Manual

You should have a copy of the Trade Marks Registry Work Manual, chapter 3 with you. Chapter 3 deals with examination and practice from the point of view of the Trade Marks Registry. Please find and read section 49, “Section 5: Relative grounds for refusal”.

ULTRAMARINE

Then answer the questions below.

How does the Manual define earlier trade marks?

What did the ECJ say about identical marks in the case LTJ Diffusion SA v Sadas Vertbaudet SA, C-291/00? Try to remember as much as possible of the wording used.

Additional guidance was given in the Court of Appeal case Reed v Reed [2004] EWCA (Civ) 159. What guidance did Jacob LJ give? Again, try to remember as much as possible.

When will marks be considered identical?

If only one of the conditions applies, which ection of the Trade Marks Act 1994 will an examiner raise an objection under?

What does the Manual say is the main emphasis in the Sabel case?

What does the Trade Marks Registry take into account when considering the degree of similarity between the respective goods or services?

Can the Trade Marks Registry base a formal refusal on a mark that is the subject of an application?

Which section prevents registration of a mark whose use (at the date of application) would be prevented by any rule of law?

ULTRAMARINE

Check your answers.

“An earlier trade mark is a trade mark (registered or pending) with an earlier date of filing, priority or seniority than the trade mark under examination.”

“A sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”

“A service provider of one sort is apt to provide a range of particular services some of which will be common to those provided by a service provider of another sort”, and that it is important to identify the core activities of the provider, rather than giving a wide interpretation of the specification of the registered mark.

“…If a) all the elements are the same, or the difference between the two are so minor that the average consumer is unlikely to notice them; and b) the specifications cover identical goods or services.”

Section 5(2).

“The idea that no single factor will lead to a conclusion that there is or is not a likelihood of confusion between marks”.

The nature of the goods/services The intended purpose of the goods or services Method of use Whether the goods/services are in competition Whether they are complementary.

Following sections 5(1) and 5(2) of the Trade Marks Act 1994, the earlier trade mark should be “protected” so a pending trade mark cannot be the basis for a formal refusal. However, section 37 precludes the registration where there is an “earlier trade mark”. So, where there are no other objections, but the one based on the earlier application would be “fatal” to the later application, the Trade Marks Registry will normally suggest suspending the application until the earlier application is registered(or withdrawn or refused).

Section 5(4).

Read the section of the Manual again if you found these questions difficult.

ULTRAMARINE

Will the public be confused? The Trade Marks Registry’s main concern is whether the public would be confused by the use of two identical or very similar marks, for the same goods or services.

You should have a copy of the Trade Marks Act 1994 with you. Please read Section 6 now. This defines an “earlier trade mark” for the purposes of the Act.

A prior right may be An earlier registered UK trade mark An earlier UK trade mark application A Community trade mark which has an earlier application date than a UK application An earlier International trade mark protected (or pending) in the UK A trade mark which claims a Convention or WTO Priority date earlier than that of the UK application (we explain what this means in the Brown Module) A Community trade mark which has a valid claim to seniority from an earlier registered trade mark or an international trade mark (UK) A well-known trade mark which is entitled to protection under the Paris Convention A lapsed or expired registration under section 6(3) removed from the Register less than a year ago An earlier right which enjoys copyright or design right protection

ULTRAMARINE

(We explain terms relating to Community trade marks in the Community Trade Marks Training Manual. )

Now turn to your copy of the Trade Marks Act 1994, and read sections 5(1) and 5(2). As you have already seen, these are the sections that require the Trade Marks Registry to raise objections when carrying out examinations of new trade mark applications.

Exclusion from the definition

There is, however, an earlier right in a trade mark which is not mentioned in the definition we have just looked at. Think for a moment about this, and then write down what it is. Then read on.

ULTRAMARINE

You should have noted that we did not previously list a mark that has goodwill and reputation through use.

Please read section 2 of the Trade Marks Act 1994 now. We deal in more detail with rights in trade marks acquired through use in the Yellow Module. For the time being, however, you should remember that a person who enjoys a reputation and goodwill in an earlier right can prevent the use of a later trade mark, even if that person has not registered their trade mark. Such a person may also assert this right in opposition proceedings. (We talk about oppositions generally in the Black Module.)

Now spend a few minutes thinking about what you already know about trade marks. In what circumstances might “earlier rights” be a relevant issue when considering trade mark law and practice? Make notes of as many of these issues as you can think of. Then read on.

ULTRAMARINE

You may have listed Searches to determine whether a trader is free to use a new mark Objections from the Trade Marks Registry during examination Oppositions Trade mark infringement Invalidity proceedings Passing-off

Some of these are matters that we will discuss in later Modules, so don’t worry if you didn’t think of all of them at this stage. However, you should be aware of their existence now in the context of thinking about prior rights in trade marks. You will learn more about Searches in the Purple Module - we will talk about searching and comparing earlier rights from the point of view of a person carrying out investigations to see whether they are free to use and/or register their trade marks Official objections in the Orange Module - at the time of writing, the Trade Marks Registry examines, and has the power to refuse, trade mark applications in the light of earlier marks, under section 5 of the Trade Marks Act 1994 Oppositions in the Black Module - oppositions are the main means by which people assert their prior rights in trade marks against applications which are filed later Infringement in the Blue Module - the owner of a trade mark right may enforce prior rights against later unauthorised users of the mark through infringement proceedings Invalidity proceedings and loss of rights in trade marks in the Pink Module – even where a mark is registered it may be declared invalid under section 47(2) of the Trade Marks Act 1994, if there is an earlier right, and the conditions set out in sections 5(1)-5(4) apply.

ULTRAMARINE

More sections of the Act

Now turn back to your copy of the Trade Marks Act 1994, and read Section 5 (3) and section 5(4)(a) and (b). Section 10 Section 47(2) Section 56.

In section 5(4)(b), other types of earlier rights are mentioned. Please list these – then read on.

ULTRAMARINE

You should have noted earlier rights based on Copyright Rights in registered designs Unregistered design right. In practice, these do not occur very often in connection with trade marks and we do not spend much time on them here.

Some relevant decided cases There are two decided cases for you to note in particular Sabel v Puma C-251/95 [1998] RPC 199 Canon v Metro-Goldwyn-Mayer (formerly Pathe) C-39/97 [1999] RPC 118.

Please make a note to read both these important cases when you have completed this Module. These offer guidance on interpretation. In Sabel v Puma, the ECJ ruled that “The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarity of the marks in question must be based upon the overall impression given by the marks, bearing in mind their distinctive and dominant components… the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.” So, when you are considering whether two marks are confusingly similar, you must think about whether there is a likelihood of confusion in the light of the degree of similarity.

ULTRAMARINE

You have almost reached the end of this Module.

As you have probably realised, the topic of earlier rights is one that we will return to over and over again in this Manual – as you will do during your career. Meanwhile, however, if there are any matters you would like to clarify, please make a note of them to discuss with your trainer.

In particular, we referred earlier to rights relating to Community trade marks. As we do not look in detail at CTMs anywhere in this Manual (as there is a separate Manual covering CTMs), you may wish to talk to your trainer about these.

ULTRAMARINE

Test yourself

Which section of the Trade Marks Act 1994 defines an “earlier trade mark”?

Please list examples of earlier rights.

Which section of the Trade Marks Act 1994 provides for rights in earlier trade marks acquired through use of such marks in the UK?

Which section of the Trade Marks Act 1994 provides for rights in an earlier trade mark deriving from copyright?

Check your answers.

ULTRAMARINE

The answers.

Section 6 of the Trade Marks Act 1994.

An earlier registered UK trade mark An earlier UK trade mark application A Community trade mark which has an earlier application date than a UK application An earlier International trade mark in the UK A trade mark which claims a Convention Priority date earlier than that of the UK application (we explain what this means in the Brown Module) A Community trade mark which has a valid claim to seniority from an earlier registered trade mark or an international trade mark (UK) A well-known trade mark which is entitled to protection under the Paris Convention. A lapsed or expired registration under section 6(3) removed from the Register less than a year ago An earlier right which enjoys copyright or design right protection A passing off right

Section 2 of the Trade Marks Act 1994.

Section 5(4)(b) of the Trade Marks Act 1994.

PURPLE

PURPLE MODULE

Searching and Comparing Trade Marks

PURPLE

In this Module, we will show how you can assist clients in deciding whether their chosen trade mark is available for them to use and register. Before you start this Module, you should have worked through the Ultramarine and Yellow Modules.

To complete this Module, you will need Internet access The Trade Marks Act 1994 The Trade Marks Registry cross-search list at www.ipo.gov.uk/tm/t-decisionmaking/t-class/t-class-cross.htm The Trade Marks Registry Classification of Goods and Services at www.ipo.gov.uk/t-class-guide.htm

When you have completed this Module, you will have Listed ways of overcoming shortcomings in searches of the Trade Marks Registry database Listed points to be included in a search report Stated what should be taken into account when carrying out a search.

This Module will take approximately one day to complete.

PURPLE

Introduction

As we have seen, section 5 of the Trade Marks Act 1994 currently prohibits the registration of trade marks which are identical to, or confusingly similar to, those in which there is an earlier right.

Apart from registered rights, a proprietor in the UK has a common law right to prevent someone else from using a trade mark in which the proprietor has goodwill, if damage results from the unauthorised use. This is an action under the tort of passingoff, which we looked at in the Yellow Module.

We saw in the Ultramarine Module that the right to take action for infringement or for passing-off is not limited by the goods listed on a registration certificate – the right extends more widely to similar goods or services (and even, in some cases, to dissimilar goods). In addition, as we discuss in the Orange Module, the Trade Marks Registry will cite marks which it believes to be confusingly similar to your client’s. You need to overcome such citations to achieve registration. Clearly, it helps to be aware of such marks prior to filing the application.

It obviously also helps if you can warn your client of any likely oppositions to your application. (The Black Module deals with oppositions.)

So we can see that, when you advise your clients, there are two aspects you need to consider whether they are free to use the mark - that is, will they infringe another mark? risk an action for passing-off? and whether they are free to register the mark.

To advise your clients, you will need to carry out searches.

PURPLE

How do you go about searching?

The most straightforward initial search to carry out is that of the Trade Marks Registry's records. If your firm carries out trade mark searches, it may either do the searches itself, on-line, or use a commercial firm to do the search. You can also go to the Intellectual Property Office to carry out searches. Before 1988, most searches had to be carried out manually. Now the Registry records are all computerised.

Don't forget that you will also need to search Community Trade Marks, because all Community Trade Mark registrations include the UK. You also need to search International Registrations which cover the UK. (There are separate manuals which deal with International Registrations and Community Trade Marks, but it is essential that you are aware at this stage of the importance of searching them.)

When you have finished this Module, ask your trainer whether your firm carries out trade mark searches - and if so, how. If you do your searching in-house, ask if someone will let you sit in while they carry out a search. If you buy-in searches, ask if you can see an example.

Your trainer should also be able to show you a completed search report - that is, a detailed assessment of the results of a search.

V There is a major limitation to a search of the Trade Marks Registry's records. Think about what it might be for a minute - no need to write anything down - and then read on.

PURPLE

You probably realised that the serious limitation is that this search will only show marks which are on file at the Trade Marks Registry. As you'll see, this is a serious limitation which you should always explain to your client - who may ask why a Register search doesn't reveal all the potential conflicts. This Module will help you to answer them.

We see in the Yellow Module that some marks are not deemed to be registrable, but may well have protection at common law. However, there can be other reasons why marks don't show up on a Registry search, but might still need to be taken into account. These can include marks which are still in use, but where the proprietor has allowed the registration to lapse the proprietor has only just filed an application to register - there may be a couple of weeks between the filing of an application and its appearance on the database don't appear because of database errors are the subject of Convention Priority applications from abroad - these may have a priority and thus an effective application date up to six months before they appear on the database. are the subject of protection under sections 5(3) and 10(3) of the Trade Marks Act 1994 as marks of reputation for dissimilar goods, and/or are protected by section 56 as “well-known marks”.

What can you do about this?

Think about it, then write down any means that occur to you of overcoming these problems. Our suggestions are on the next page.

PURPLE

You could try

searching other sources of trade information such as Telephone and fax directories Trade directories Trade magazines Other databases Industry lists of all marks and names which are claimed to be in use Domain names Websites Registered company names (the Registry’s search database page on the Internet has a link to the Companies Register) These may give an indication of names or marks which are in use and in which there could be common law rights – an internet search, for example, putting the name into Google may be useful, although it may produce too many results to be meaningful.

Carrying out a further search of the Register in six months time to see what has been filed in the interim

Recommending that your client asks business colleagues if they have heard of similar names

Suggesting that your client asks business contacts as well

Suggesting “in-use” searches, since registered marks found may not be valid for example, if they are over five years old, and unused.

You may have thought of some more ideas.

PURPLE

Commercial common law searches

You may like to note that some commercial organisations can carry out so-called “common law searches” for you. These typically search telephone directories, the Internet and trade directories. Since doing this sort of search yourself can be extremely time-consuming, this can be very helpful. However, you should discuss with your client what this sort of search does, and does not, cover.

In this Module, we'll be concentrating mainly on searches of Trade Marks Registry records, rather that common law searches, but it's important for you to be aware that Registry searches are not comprehensive.

But - even if a Registry search is all you carry out – remember to cover yourself

ALWAYS TELL YOUR CLIENT - IN WRITING - WHAT THE LIMITATIONS OF YOUR SEARCH ARE!

PURPLE

Tackling a Clearance Search

We'll look now at an example of how a practitioner carries out a search.

Your client has rung up and said that she would like to put the mark PREMIER on toasters. Is she free to use it? Note that she would not, of course, be able to register it on its own, as it is such a non-distinctive mark.

You should begin by asking your client a few questions. Does she know if the mark is being used by anyone else? How did she choose the mark? Is she trying to gain an advantage over a specific competitor by using the mark? Has she started using it?

Let's assume that she has told you that she doesn't know of anyone else in her trade using the mark and has chosen it simply because she likes it. You are now going to give the search instructions to the person who will actually carry out the search. What are you going to ask them to search?

PURPLE

Classification

The UK Trade Marks Registry divides all goods and services, for which marks may be registered, into 45 different Classes. This classification is published by the World Intellectual Property Organization in Geneva and is largely followed by the UK Registry. This Classification is used in many countries, with some local variations. Any changes in practice in the UK are normally published in the Trade Marks Journal.

Now go to the Trade Marks Registry Classification of Goods and Services at www.ipo.gov.uk/tm/t-find/t-find-class.htm

Click on “Classification search”. Start now by typing "toasters" into the search box, to see which Class they fall into.

Then read on.

PURPLE

You should have found that toasters fall into Class 11, as electrical apparatus for domestic use. (Sometimes your client will want you to search for something that isn't specifically mentioned in the index. If that happens, the Trade Marks Registry can normally guide you to the right Class. Their telephone help-line on classification issues is very good.) Now look at the Explanatory Notes, with Class headings, earlier on in the Classification guide, covering Class 11. As you can see, it covers a much wider range of goods than just toasters - so if you tell your searcher to search Class 11, you'll automatically cover other domestic electrical items such as kettles. This may be important if a competitor is using the same or a similar mark for similar goods But we've seen, in the Ultramarine Module, that rights to prevent infringement and passing-off can be broader than simply providing rights to prevent use of the same mark on the same goods. So, it would be a wise precaution to search other classes as well, where there is a possibility of an overlap with your client's goods.

Click back to Classification of goods and services and look through the list of classes. Make a note of other Classes which you would consider searching. (A hint - think about what the goods are made of and about the channels of trade - that is, where they are sold.)

Then compare your list with ours overleaf.

PURPLE

We thought we should search at least Class 7

which includes some domestic machines

Class 9

which includes some types of electrical and electronic apparatus

Class 21

which includes kitchen utensils and “gadgets” such as coffee percolators

Class 35

which covers retail services

Class 37

which covers repair services.

Class 42

which covers technical design and consultancy services

You may have other classes on your list as well. However, there is little point in searching too broadly, as this will increase costs, as well as the volume of results that you will have to go through.

Please note that many of the commercial search engines will search on the basis of programmed cross-search lists. Nevertheless, you ought to know how they are set up/configured, at least in outline. We strongly recommend asking your trainer if you can attend one or two of the “introduction to searching” courses run by the commercial searchers.

PURPLE

You can now tell your searcher what your client's mark is, and which Classes to search. The Trade Marks Registry also publishes a cross-search list (which shows the other classes that the Registry will search when they examine a mark in a particular Class) which is useful.

Now go back to www.ipo.gov.uk/tm/t-decisionmaking/t-class/t-class-cross/ t-class-cross-how.htm and click on “Guide to cross-searching goods and services”. Spend a little time looking at it, and clicking back to the classification guide, to see what is in the classes that are cross-searched. Then answer the following question.

Only one class is, at present, cross-searched across ALL classes. Which one is it, and what does it cover? Check your answer.

PURPLE

It is Class 34 - Tobacco; smokers' articles; matches. There is a specific reason for this. It is because of the strict regulations on tobacco advertising - The Tobacco Advertising and Promotion (Brandsharing) Regulations 2004 (the Brandsharing Regulation) applies here. Make a note to read paragraph 38.13 of Chapter 3 of the Trade Marks Registry Work Manual when you have finished this Module.

Before you start a search, there is something else you need to build into your instructions to make sure that your search covers everything it should.

Think about what you know about the scope of earlier rights.

Then make notes as to how you might add to the instructions you give to your searcher to try to ensure that any mark on the database which might be of concern to your client is picked up.

When you've made your notes, compare them with ours overleaf.

PURPLE

You should also make sure that you search marks which are close, in look or sound, to your client’s proposed mark. Don’t forget that section 5 of the Trade Marks Act 1994 includes in its definition of infringement use of marks that are similar to earlier marks, where there exists a likelihood of confusion on the part of the public, which includes the likelihood of association. Note – you will sometimes be searching to see whose name a mark is registered in. This might happen if your client is buying a business – or just a trade mark – or you are dealing with the transfer of ownership of a trade mark. So, when searching PREMIER, you might also cover marks such as PREMIERE PREMMIA BREMIER. You can probably think of some more.

For longer marks, it is helpful to split the mark into its constituent parts: prefixes - PREMIER infixes - PREMIER suffixes - PREMIER

V Think about the different ways that the word PREMIER might appear in other marks – perhaps in association with a company name or “house mark”.

PURPLE Some history At this point, it will help your understanding if you realise how searches used to be carried out (up to 1988/89). All the trade marks on the Register were entered into various indexes. When you wanted to search a mark, you first looked in the “prefix” index – so for example, you looked for PREM- marks. You also looked for PRIM- marks, PROM- marks, PRUMmarks and PRYM- marks. Then you looked in the “suffix” index, for –MIER marks, -MEAR marks, -MYR marks, -MARE marks and so on. The pending applications were filed separately, in ledgers showing the marks as renewed by the Trade Marks Registry. You searched these separately. Device marks did not fit into the main prefix and suffix indexes and were categorised separately. The reason we mention this is that you need to be aware that the search on your computer screen derives from, and is only a few generations away from, the old system. The computerised searches download their basic data from the Trade Marks Registry’s records. The Registry’s records derive from a massive computerisation project in the late 1980s where the old records were put onto computer record for the first time. In addition, all include data downloaded from the Community Register and from the list of International Registrations designating the UK, or offer the possibility of separate searches of these Registers. On-line searches are available via the various trade mark registers – as well as the UK Trade Marks Register, you can also search the European Community Trade Marks Register and the International Register administered by WIPO.

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The Trade Marks Registry database

Go to www.ipo.gov.uk/tm/dbase/index.htm. Explore it by clicking on the various links.

Then – from memory if possible - try to enumerate the various database headings under which you can carry out a search.

Then compare your list with ours.

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You can search by Case Text Proprietor Refused Classification Caveats Journal and you can also carry out a company name search on the Companies House database from the link on this page.

As you have already looked at toasters from a classification point of view, let’s search the word as a trade mark.

Click on “Text”. Enter “toaster” (without the quotation marks) into the search box, and hit “Search” to see the format of the results. “SW” means “stylised word” “WO” means “word only”.

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Commercial search engines

It is important to remember that searches via these databases are not exhaustive.

There are many areas that are not covered by these types of searches.

Take a moment now to list any trade marks that might be excluded from the results when you carry out this sort of search.

Then compare your list with ours on the next page.

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Your list should have included at least common law rights company names domain names famous marks registered in Classes outside those searched foreign trade marks (outside the Register you are searching).

Even if you tried to search through the numerous foreign national trade mark registers you will find that they are frequently in a foreign language or not user-friendly – and the process is time consuming.

Various commercial trade mark search engines are available which will deal with the onerous task of going through numerous national trade mark offices, and will search on the basis of programmed cross-search lists. Such commercial trade mark search engines normally contain a whole host of databases from the numerous national registers. One such commercial trade mark search engine is called SAEGIS™, run by the CompuMark organisation. SAEGIS™ is a platform on the Internet where you can perform various categories and levels of searches yourself.

We will look in more detail at SAEGIS™ very shortly.

Before then, however, we will look at some sample search results of the mark PREMIER

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Sample search

After the end of the Module, you'll find a printout of the search results for PREMIER, used by your client in respect of toasters. Before you look at it in detail, look at the format in which the marks are shown. You can see that it includes A summary of the marks found Details of the mark search The person who carried out the search A table of results found The full text of the “hits” (results) found- this is very long, but gives the useful detail you will need to assess whether a particular mark may be a problem for a client – including The mark The type of mark that it is – for example, a UK registration or a Community Trade Mark The application number, and if registered, the registration number Its status- whether it is an application, registered, refused, lapsed or withdrawn The trade mark type. This will tell you if the mark is not a word or words, but is a design. Many search formats will show you the mark as filed. (If the mark consists of or includes a design ("device"), this search format will also show the classification the Registry has given to the type of device - for example, it may be a robin, in which case it will be classified as a category of bird.) The application date Whether there are a number of marks in a series The Class(es) of Goods (which also shows the Class heading) and the Goods specification (that is, the goods or services which are covered by the application, or in respect of which the mark is registered) The name, address and country of the proprietor (you may also be able to obtain details of the agent acting for the proprietor) The date of any International Convention priority claimed.

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Take some time now to read through the details on the marks we've found and think about what you might advise your client. Consider the report on a mark by mark basis - there's no need to write anything down at this stage. (We'll give you a chance to tackle writing a search report of your own soon.) Note the details of The mark searched – PREMIER The International Classes searched – 11 The databases searched – “United Kingdom, Community Trademarks, International Register (selected countries only)” The first one found, CIRCULON PREMIER (ref 1), is registered in the UK in respect of “CLASS 11 DOMESTIC APPARATUS FOR COOKING; WOKS; SKILLETS; MULTI-STEAMERS; MULTI-POTS; FONDUES; FRYPANS; STOCKPOTS; ROASTERS; SAUCEPANS; GRIDDLES; DEEP-FAT FRYERS; PRESSURE COOKERS AND RICE COOKERS. CLASS 21 . HOUSEHOLD OR KITCHEN IMPLEMENTS, UTENSILS AND CONTAINERS; COOKWARE, BAKEWARE, ROASTWARE; PRESSURE COOKERS; POTS, PANS, SAUCEPANS, FRYPANS, COVERED SAUTE PANS, SKILLETS, CASSEROLES, STOCKPOTS, GRIDDLES, CHINESE WOKS; GLASSWARE, PORCELAIN AND EARTHENWARE; CROCKERY.”

Note that the search result covers Class 21 as well as Class 11. The specification does not include toasters as such, but the goods are similar. Your client needs to be aware of this registration as a potential problem. (If toasters are of no interest to the owner of this mark, they may consent to your client’s registration.) The second one, shown as PREMIER PREMIER has been refused registration. As you can see from the last part of the entry, it is a series of two PREMIER marks, one in colour and the other in black and white. Although it is not registered and cannot therefore be infringed, the owner might still be using it. Note that Premier is part of the user’s name. You could check on the Company Registry website whether the company still exists. However, the goods do appear to be sufficiently different. The third one, STOVES PREMIER COLLECTION (another series, this time of three marks) is registered in, among other classes, class 11. Again, the goods appear different, but the fact that they fall into the same class should be mentioned to your client. And don’t forget that even if the mark is not registered in respect of toasters, it might be used for these goods. This one should probably be investigated further.

PURPLE Look further down the list. The fourth mark does not mention “toasters”, but does cover “apparatus for heating”. Could this include toasters? The fifth mark shown, ELECTROLUX PREMIER ECO, is registered for many goods, including “toasters” and “sandwich toasters” – the identical goods. Although the marks are not identical, this one incorporates your client’s mark. This could well be a problem. The sixth mark, in the same ownership, includes toasters as well. Mark 9 also includes “apparatus for heating”, but disclaims exclusive rights in PREMIER. Mark 11 is a concern – the specification includes toasters and toasting apparatus.

Comparing marks - some guidelines You should remember that we looked in detail at this in the Ultramarine Module. Remember, when you are comparing the marks you have found with your client's proposed mark, that the circumstances under which you are looking at the two marks are artificial. They are not the usual business circumstances under which marks are usually seen or heard. You also need to think about, for example, how the mark might sound if spoken down a bad telephone line what might happen if a person saw one trade mark and then, later on, saw the other. You should also think about the circumstances in which the goods are being sold when you are comparing marks. Consider who the average purchaser will be – whether a member of the public or someone with specialist knowledge of the goods and services. As part of the “global appreciation of the factors of comparison” of the marks and goods which is necessary, you must also consider the type of goods being compared. So, you can argue that someone who is buying a new computer is likely to take more time and be better informed about the goods than someone who is buying a pocket calculator - and is less likely to be readily deceived or confused.

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SAEGIS™ By way of example, let’s think about some of the options offered by SAEGIS™. “Trademark Screening” is the term SAEGIS™ uses for trade mark searching Custom Search Using “Custom Search” allows the user to set the required criteria for the search. It can be used for quick identical look-ups, trademark status reports, owner name searches and for queries which require the use of additional fields. AutoQuery With AutoQuery the system itself automatically generates the search strategy, after the user has entered the trademark, the country and/or the product. Depending on the trademark to be searched, the computer will make a selection from predefined built-in search queries to run against your trademark. WISS-RISS-KISS These are types of “Identical Screening Search”. SAEGIS™ checks both identical trademarks and certain phonetic variations on the identical trademark. The search can be conducted worldwide or limited geographically. Three possibilities are WISS (Worldwide) RISS (Region) KISS (Country). The search is based on a database containing the original publication of all trademarks since 1st January 1976, without any subsequent changes or updates.

Under what circumstances might you want to use these searches? Make a note of your ideas, and then read on.

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You may have thought of these possibilities. During trademark creation, the Identical Screening Search can help with a preliminary elimination of trademarks that are (very likely) no longer available. This helps minimise the number of trademarks for availability searches. In the case of an opposition procedure, you can use an Identical Screening Search to check whether the same trademark is filed in other countries. In the case of a merger or take-over, the Identical Screening Search enables you to discover countries where a specific trademark has been published. Note - searching using the WISS-RISS-KISS option can be expensive and should be used sparingly. It is particularly useful as a tool when you are dealing with merger or takeover cases, and in due diligence cases (where you are seeking to establish the extent of a third party’s rights in a mark). Note also that it is not complete – marks dated before 1976 may be missing, and records of individual marks are not kept up to date. Therefore you should never rely solely on this option when clearing a mark for use.

Screening of the Internet “Domain Name Search” can be used to check whether the trademark has been registered as a domain name on the Internet. Industry Searches “Pharma In-Use search”. This is a database which collects information about pharmaceutical products and you can check on-line whether a brand name is used as a pharmaceutical name.

Next, we will talk about the Custom Search.

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Custom Search There is a shortcut option “Custom Search” under the heading Trademark Screening. After that you need “Select Database” on the left hand side, and you then need to make your selections via the check boxes. If a selected country is part of the European Community the box of the Community Trademarks database will automatically be checked; if the country is part of the Madrid Agreement or Madrid Protocol, the box of “International trademarks with protection in the selected countries ONLY” will be checked as well.

Before entering the search criteria, you can specify some search options such as “Active Only”, “Cross References” and “Plurals” from the main Custom Search screen.

Active Only This restricts the output of the query to marks with an active status - for example, Pending Published Registered Renewed and omits marks that have the status lapsed, withdrawn or abandoned.

Cross References This finds homonyms, plays on words and numeric equivalents. For example, “For You’” will also retrieve 4UUUU or 4 YOU or 4U or “Energy” will retrieve enrg, energee, and nrg.

Plurals These include +S ’S ES Irregular forms – for example, mouse to mice, goose to geese.

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The search fields in Custom Search will always default to “Trademark”, “International Class(es)” and “Owner names”. However, these can be altered by clicking on the arrow button to reveal the droplist menu. “Trademark” gives variant spellings, synonyms, homonyms and truncation.

“Exact Trademark” and “Phonetic Trademark” are also available via the droplist menu. “Exact Trademark” restricts the output to trade marks which correspond to the letter string exactly as entered, with no additional terms included. “Phonetic Trademark” retrieves marks that may sound similar to the term searched. For example, certain consonants and groups of consonants are replaced with soundalike strings – for example, as F and PH.

Truncation is provided through the use of the asterisk (*). Truncation allows a search term to cross space boundaries and attach to other letter strings wherever the truncation is provided. If truncation is not present the term will only search what is asked, and will not retrieve connected terms. For example Whole word Prefix Mid-word Suffix Multi-word (midwords)

BOOT BOOT* *BOOT* *BOOT *SPICE* *GIRL*

PURPLE Summary - how you should report your findings to your client Don't assume that your client understands the basis on which you've carried out your search - your client may have very little understanding of the law and practice relating to trade marks. Remember to explain the limitations of your search the basis on which you searched - the classes and phonetic equivalents covered that freedom to use and freedom to register both need to be considered and why why you believe that a given mark is confusingly similar to your client's why some marks can be disregarded, if applicable. Make it easy for your client to follow what you're saying give the mark, its number and where it appears on the search report prioritize your information - if you find a mark which seems to be an absolute barrier to your client's freedom to use or register, say so first don't discuss each mark individually if you find some of them are irrelevant; give full details of relevant marks, but if there are a lot of marks which are less relevant for much the same reasons, you could simply explain that, for example, they cover wholly different goods or do not look and sound alike summarize your findings clearly.

Now spend a few minutes thinking about preparing a search report for a client. Make a list of the main areas you would cover, and then compare your list with ours on the next page.

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Your search report should have included the following points: Details of the database searched, including when it was last updated The classes you searched Whether you searched registered, lapsed and abandoned marks in the UK and Community Trade Marks and International Registrations The limitations of your search, including database errors the fact that very recent applications will not appear some foreign - Convention Priority - applications will not yet appear the potential existence of marks in which there may only be common law rights (enforceable by passing-off action) domain names websites Ways to extend the scope of your search to overcome the limitations (a search, where possible, of common law rights; a search of the database again in six months) Each of the relevant marks found, identified by the mark itself, its number and where it appears in the report An assessment of the relevant marks, covering whether the respective marks look or sound alike or have the same meaning whether they cover the same goods or goods of the same description (for example, antiseptics and antibiotics are both used for combating bacteria and are supplied by pharmacists) whether your client would infringe any of the marks The difference (briefly!) between rights giving rise to infringement and passing-off and the difference between freedom to use and freedom to register A summary of your findings - is your client free to register the mark? and - most importantly free to use the mark?

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As you will have appreciated by now, it's nearly always very difficult to give a completely unequivocal answer to your client. Searches and comparisons of trade marks are subjective by their nature, and there are many factors you need to take into account. Different people assessing the same search report will often have different opinions.

Something you should always remember You can give your opinion on the results of a search and be wrong without being negligent but if you completely fail to mention a mark - or omit to search an area which ought to have been covered and which might be relevant, then you could be held negligent.

So - be very careful to avoid overlooking things. Something else you should note is that, if you instruct an outside agency to do a search and they miss an obvious conflicting mark, you are likely to be liable to the client for their work. You may have a claim for negligence against the searcher, but this does not absolve you from responsibility to your client. (There has been a recent case on the possible negligence of a firm of patent attorneys who instructed US searchers – ask your trainer about this.) Searching, as you should have realised by now, is one of the most important skills and functions of a trade mark attorney – and perhaps the most important one. Millions of pounds can depend on it, and yet it requires fine professional judgment. Always discuss searches with a qualified trade mark attorney.

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You've almost reached the end of this Module and, as usual, we've given you a quiz so that you can test your learning, on the next pages.

Don't forget that if you want to make any notes for future reference, we've given you some extra pages in your Workbook.

You should also be able to talk about anything that's puzzling you, or that particularly interests you, with you trainer. If your office carries out regular trade mark searches, you could ask to see some - and possibly practise writing some reports. We particularly recommend that you show your own attempt at a search report to him or her for discussion.

Now move on to the quiz.

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Test yourself

There are several limitations to a search of the Trade Marks Registry's records. What are they?

Using your International Classification guide, write down the Classes into which the following goods and services fall (a) Detective agencies (b) Nail varnish (c) Fruit jellies (d) Television rental (e) Silver napkin rings.

Your client has used the mark TOPKAPI for Turkish Delight since 1984 and now wants to register it. Your search locates a 1993 registration of TOPKAPI for chocolates. What points would you include in your advice?

If you see the words "parts and fittings" in a specification, what should you be careful to consider?

Your client has instructed you to carry out a search. Think carefully about all the areas where someone might have earlier rights. Then list everything you can think of that you should, ideally, consider when searching.

Check the answers.

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The answers

The limitations include no indication of marks not on file at the Trade Marks Registry that may have common law rights the fact that recent applications will not be shown some overseas Convention Priority applications will not yet be shown there are errors in the database - albeit rarely. domain names are not searched common-law rights are not searched

(a) Class 45 (b) Class 3 (c) Class 29 and 30 (d) Class 41 (e) Class 14 and 21 - under "Napkin rings of precious metals".

The points you could cover include Your client's use of the mark may predate that of the other proprietor - in which case your client may have an earlier right under Section 11(3) of the Trade Marks Act 1994 and consequently does not infringe – or the 1993 mark was not validly registered It may be possible to differentiate the goods - although this would be difficult, particularly in the case of chocolate-coated Turkish Delight Even if both proprietors have legitimately used the mark for some time, and the other proprietor has earlier use, your client may, since she has used the mark for a number of years, now be able to claim “honest concurrent use” in order to register her mark (if unopposed) Is the mark in use? If not, revocation might be an option. You may have some more ideas.

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You should consider whether parts and fittings for the goods in the specification might be the same as, or similar to, your client's goods.

We think you should consider identical similar marks registered or applied for in respect of the same goods or services similar goods or services different goods or services, where the registered mark has a "reputation". You should consider marks in the UK Community trade marks International trade mark registrations And don't forget that unregistered rights may include marks protected by copyright unregistered design rights

It is also essential to advise your client on any passing-off implications.

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PURPLE MODULE

Searching and Comparing Trade Marks PREMIER Sample Search

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PREMIER Search results

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Summary of results for PREMIER Ref No.

Image

Trademark

Database

Status

CIRCULON PREMIER

United Kingdom

REGISTRATION

11, 21

Meyer Manufacturing Company Limited

PREMIER PREMIER

United Kingdom

REFUSED APPLICATION (Abandoned)

6, 9, 11, 16, 20, 35, 37, 40, 41, 42

Premier Group International Limited

STOVES PREMIER COLLECTION STOVES PREMIER COLLECTION STOVES PREMIER COLLECTION

United Kingdom

REGISTRATION

11, 16

Stoves Group Limited

PREMIER PLUS

United Kingdom

REGISTRATION

Heatrae-Sadia Heating Limited

ELECTROLUX PREMIER ECO

United Kingdom

REGISTRATION

7, 9, 11

Aktiebolaget Electrolux

ELECTROLUX PREMIER

United Kingdom

REGISTRATION

7, 11

Aktiebolaget Electrolux

SELECT EDITION PREMIER

United Kingdom

REFUSED APPLICATION (Abandoned)

6, 11, 16, 20, 21, 22, 24, 27

Wal-Mart Stores, Inc.

PREMIER HAZARD

United Kingdom

REGISTRATION

9, 11

Premier Hazard Limited

MYSON PREMIER

United Kingdom

REGISTRATION

Rettig (UK) Limited

TRICITY PREMIER

United Kingdom

REGISTRATION

Electrolux plc

HOME-TEK PREMIER PREMIER HOME-TEK

United Kingdom

REGISTRATION

7, 9, 11

Home-Tek International Limited

LG PREMIER LINE

United Kingdom

REGISTRATION

7, 11

LG Corp.

Class

Owner Name

PURPLE Reference: 03/10/2006 Username: N IMAM

Search Strategy Options: Cross References = on, Plurals = on, Active Only = off Q1

Trademark = premier, International Class(es) = 11

Selected Databases TRADEMARKSCAN®-- United Kingdom, Community Trademarks, International Register (selected countries only)

Table 1: Hit list for the mark ‘PREMIER’

Full Text For Citations PREMIER CIRCULON PREMIER ref.1 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2348446 Registration Number: 2348446 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 12 November 2003 (November 12, 2003) Entered Register: 23 April 2004 (April 23, 2004) Expiration Date: 12 November 2013 (November 12, 2013) Duration: 10 years International Class(es): 11 (Environmental control apparatus) 21 (Housewares and glass) Goods/Services: CLASS 11 . DOMESTIC APPARATUS FOR COOKING; WOKS; SKILLETS; MULTI-STEAMERS; MULTI-POTS; FONDUES; FRYPANS; STOCKPOTS; ROASTERS; SAUCEPANS; GRIDDLES; DEEP-FAT FRYERS; PRESSURE COOKERS AND RICE COOKERS. CLASS 21 . HOUSEHOLD OR KITCHEN IMPLEMENTS, UTENSILS AND CONTAINERS; COOKWARE, BAKEWARE, ROASTWARE; PRESSURE COOKERS; POTS, PANS, SAUCEPANS, FRYPANS, COVERED SAUTE PANS, SKILLETS, CASSEROLES, STOCKPOTS, GRIDDLES, CHINESE WOKS; GLASSWARE, PORCELAIN AND EARTHENWARE; CROCKERY. Last Reported Owner: Meyer Manufacturing Company Limited 382 Kwun Tong Road, Kowloon, Hong Kong HK (HONG KONG) Correspondent Info: Marks & Clerk Tower Building, Water Street, Liverpool, Merseyside, L3 1BA GB (UNITED KINGDOM) Last Full Publication: 09 January 2004 (January 9, 2004) In Journal: TMJ 6513 page

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Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6513 dated 9 January 2004 NOTIFICATION OF REGISTRATION: TMJ Volume 6531 dated 21 May 2004

PREMIER PREMIER ref.2 Design Extra: and design TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2305588 Status: REFUSED APPLICATION (Abandoned) Status According to National PTO: WITHDRAWN Application Date: 18 July 2002 (July 18, 2002) International Class(es): 6 (Metal goods) 9 (Electrical and scientific apparatus) 11 (Environmental control apparatus) 16 (Paper goods and printed matter) 20 (Furniture) 35 (Advertising and business services) 37 (Construction and repair services) 40 (Material treatment services) 41 (Education and entertainment services) 42 (Miscellaneous service marks) Goods/Services: CLASS 06 . DISPLAY AND EXHIBITION STANDS, FRAMES AND FRAMEWORK; FIXED, PORTABLE AND SELF-ERECTING STANDS, FRAMES, FRAMEWORK, PARTITIONS AND PANELS FOR EXHIBITION AND DISPLAY PURPOSES; ALL BEING MADE WHOLLY OR PRINCIPALLY FROM COMMON METALS AND THEIR ALLOYS. CLASS 09 . VIDEO AND AUDIO VISUAL PRESENTATION APPARATUS AND INSTALLATIONS; VISUAL AND AUDIO-VISUAL PRESENTATION AND DISPLAY INSTALLATIONS; PROJECTION APPARATUS; PROJECTION SCREENS; PLASMA SCREENS AND DISPLAYS; APPARATUS FOR CONTROLLING LIGHTING; CONTROL CONSOLES AND APPARATUS FOR CONTROLLING LIGHTING, VISUAL AND AUDIO-VISUAL EQUIPMENT AND INSTALLATIONS; COMPUTER HARDWARE; COMPUTER SOFTWARE; DATA STORAGE MEDIA; DATA TRANSMISSION AND PROJECTION MEDIA; PARTS AND FITTINGS FOR ALL OF THE AFORESAID GOODS. CLASS 11 . LIGHTING APPARATUS AND INSTALLATIONS; LIGHTING SYSTEMS FOR DISPLAY AND PRESENTATION PURPOSES; EXHIBITION LIGHTING SYSTEMS; ILLUMINATED DISPLAY SYSTEMS; LAMPS; PARTS AND FITTINGS FOR ALL OF THE AFORESAID GOODS. CLASS 16 . PRINTED MATTER; EXHIBITION GRAPHICS, GRAPHIC SIGNS AND GRAPHIC BACKDROPS; LARGE FORMAT GRAPHICS; POSTERS; BANNERS; POP UP PRINTED DISPLAYS; POP UP PHOTOGRAPHIC DISPLAYS; DISPLAY MOUNTS; PHOTOGRAPHS; CONFERENCE, SEMINAR AND EXHIBITION HANDOUTS, INFORMATION PACKS AND LITERATURE; ALL BEING PRINCIPALLY PRINTED MATTER. CLASS 20 . EXHIBITION STANDS; PORTABLE DISPLAY SYSTEMS; FREE STANDING DISPLAY SYSTEMS; PARTITIONS AND PANELS FOR EXHIBITION AND DISPLAY PURPOSES; POSTER STANDS; EXHIBITION BOOTHS; BANNERS AND BANNER SYSTEMS AND STANDS FOR EXHIBITIONS, CONFERENCES, SEMINARS, MEETINGS AND OTHER EVENTS; BOARDS, SCREENS AND STANDS; EXHIBITION AND DISPLAY

PURPLE FURNITURE; MODULAR DISPLAY SYSTEMS; FOLDING PANELS, STANDS AND DISPLAY SYSTEMS; SHELVING, RACKS AND BRACKETS; STORAGE AND TRANSPORT CONTAINERS; PARTS AND FITTINGS FOR ALL OF THE AFORESAID GOODS. CLASS 35 . MARKETING AND DESIGN CONSULTANCY SERVICES; RETAIL AND MARKETING SERVICES IN CONNECTION WITH CONFERENCES, EXHIBITIONS, SEMINARS, MEETINGS AND DISPLAYS; BUYING AND SELLING EXHIBITION SPACE, BOOTHS, DISPLAY AREAS AND EQUIPMENT FOR USE IN CONNECTION WITH EXHIBITIONS, CONFERENCES, SEMINARS, MEETINGS AND OTHER EVENTS. CLASS 37 . INSTALLATION, ASSEMBLY, DISASSEMBLY, MAINTENANCE, REPAIR AND REMOVAL OF DISPLAY STANDS AND SYSTEMS; CONSTRUCTION, ERECTION AND INSTALLATION OF TEMPORARY STRUCTURES FOR CONFERENCES, EXHIBITIONS, SEMINARS, MEETINGS, PRESENTATIONS AND OTHER EVENTS; INSTALLATION, ASSEMBLY, DISASSEMBLY, MAINTENANCE, REPAIR AND REMOVAL OF LIGHTING APPARATUS AND VISUAL AND AUDIO-VISUAL PRESENTATION APPARATUS, EQUIPMENT AND SYSTEMS. CLASS 40 . DESIGN AND MANUFACTURE OF DISPLAY SYSTEMS; EXHIBITION AND PRESENTATION DESIGN AND INSTALLATION; DISPLAY MOUNTING AND FINISHING; PRINTING; INK JET PRINTING; LITHOGRAPHIC PRINTING; LASER PRINTING; PHOTOGRAPHIC PRINTING SERVICES; DIGITAL IMAGING; LIGHT JET IMAGING; TREATMENT OF MATERIALS FOR EXHIBITION AND DISPLAY PURPOSES. CLASS 41 . EQUIPMENT HIRE FOR USE IN CONJUNCTION WITH EXHIBITION AND EXHIBITION DISPLAY SYSTEMS; HIRE, RENTAL AND LEASING OF EQUIPMENT FOR USE AT EXHIBITIONS, CONFERENCES, SEMINARS, MEETINGS AND OTHER EVENTS, INCLUDING DISPLAY EQUIPMENT AND INSTALLATIONS, TEMPORARY STRUCTURES, LIGHTING APPARATUS AND INSTALLATIONS, VISUAL AND AUDIO-VISUAL PRESENTATION APPARATUS AND INSTALLATIONS, FURNITURE, CARPETS AND ACCESSORIES. CLASS 42 . EXHIBITION AND DISPLAY DESIGN CONSULTANCY SERVICES; CONSULTANCY SERVICES FOR CONFERENCES, EXHIBITIONS, SEMINARS, MEETINGS, PRESENTATIONS, CORPORATE MEETINGS, PUBLIC MEETINGS AND OTHER EVENTS; DESIGN AND CONSTRUCTION CONSULTANCY SERVICES FOR TEMPORARY EXHIBITION AND DISPLAY STRUCTURES AND APPARATUS; DESIGN AND CONSULTANCY SERVICES FOR LIGHTING, AUDIO AND AUDIO-VISUAL PRESENTATIONS AND DISPLAYS; GRAPHIC DESIGN SERVICES; DESIGN OF VISUAL AND AUDIO-VISUAL CREATIVE AND PRESENTATIONAL WORK; PROJECT MANAGEMENT, ADVISORY, CONSULTANCY AND INFORMATION SERVICES RELATING TO THE AFORESAID SERVICES. Last Reported Owner: Premier Group International Limited 82 St. John Street, London, EC1M 4JN GB (UNITED KINGDOM) Agent Information: Courts and Co. 15 Wimpole Street, London, W1G 9SY Lining/Color Claims: The Applicant claims the colours turquoise and white as an element of the first mark in the series. Notes: SERIES OF MARKS: 2 Design Codes: 260412 261112 260401 270511

PURPLE

STOVES PREMIER COLLECTION STOVES PREMIER COLLECTION STOVES PREMIER COLLECTION ref.3 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2285218 Registration Number: 2285218 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 10 November 2001 (November 10, 2001) Entered Register: 20 December 2002 (December 20, 2002) Expiration Date: 10 November 2011 (November 10, 2011) Duration: 10 years International Class(es): 11 (Environmental control apparatus) 16 (Paper goods and printed matter) Goods/Services: CLASS 11 . INSTALLATIONS AND APPARATUS ALL FOR REFRIGERATING, VENTILATING, WATER SUPPLY AND SANITARY PURPOSES; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS. CLASS 16 . CATALOGUES, HANDBOOKS, MANUALS, LOOSE-LEAF BINDERS, PAPER SHEETS; PRINTED MATTER, PUBLICATIONS AND STATIONERY; COMPUTER PRINTOUTS; NONE OF THE AFORESAID RELATING TO COOKING APPARATUS. Last Reported Owner: Stoves Group Limited Stoney Lane, Prescot, Merseyside, L35 2XW GB (UNITED KINGDOM) Agent Information: Atkinson Burrington 28 President Buildings, President Way, Sheffield, S4 7UR

PURPLE

Last Full Publication: 04 September 2002 (September 4, 2002) In Journal: TMJ 6446 page 15096 Notes: BY CONSENT: By Consent Nos. 2107327 (6206,14482), 2168146 (6269,2849) and others.SERIES OF MARKS: Application for a series of three marks. Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6446 page 15096 dated 4 September 2002 NOTIFICATION OF REGISTRATION: TMJ Volume 6466 page 1196 dated 29 January 2003 CHANGES CONCERNING OWNER updated 26 October 2003

PREMIER PLUS ref.4 Design Extra: and design TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2276775 Registration Number: 2276775 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 01 August 2001 (August 1, 2001) Entered Register: 15 November 2002 (November 15, 2002) Expiration Date: 01 August 2011 (August 1, 2011) Duration: 10 years International Class(es): 11 (Environmental control apparatus) Goods/Services: CLASS 11 . INSTALLATIONS AND APPARATUS, ALL FOR HEATING; INSTALLATIONS AND APPARATUS ALL FOR DRYING AND FOR WATER SUPPLY, DEHUMIDIFERS; WATER HEATERS; ELECTRONIC IMMERSION HEATERS, REGULATING FITTINGS FOR WATER APPARATUS AND FOR PIPES, SAFETY FITTINGS FOR WATER APPARATUS AND PIPES; PRESSURE WATER TANKS, HEATERS FOR BATHS AND SHOWERS; BATHS, WASH BASINS, BIDET, WATER CLOSETS, SHOWER CUBICLES AND SHOWER TRAYS, ALL BEING PART OF WATER SUPPLY INSTALLATIONS; WATER TAPS AND HEADS THEREFOR; SHOWER HEADS; URINALS; WATER FOUNTAINS; PARTS, FITTINGS AND ASSOCIATED EQUIPMENT FOR ALL THE AFORESAID GOODS. Last Reported Owner: Heatrae-Sadia Heating Limited Hurricane Way, Norwich Airport, Norwich, NR6 6EA GB (UNITED KINGDOM) Agent Information: Novagraaf Norwich Limited Willow Lane House, Willow Lane, Norwich, Norfolk, NR2 1EU

PURPLE Lining/Color Claims: The applicant claims the colours blue and red as an element of the mark. Last Full Publication: 31 July 2002 (July 31, 2002) In Journal: TMJ 6441 page 13057 Notes: SECURITY INTERESTS: By a trade mark charge dated 26 March 2004 between inter alia Heatrae Sadia Heating Limited (a company incorporated i England and Wales)(the Company) and The Royal Bank of Scotland Plc, Level 7, 135 Bishopsgate, London, EC2M 3UR(the Security Trustee)(the trade mark), the company granted a first fixed charge over the trademarks and trademark applications listed. (the trademarks) in favour of the security trustee (as agent and trustee for the Secured Parties (as defined inthe trade mark). Under the trade mark charge, the company has agreed, inter alia, not without the consent of the security trustee to:(1) assign, sever,dispose of or licence on an exclusive or sole basis or otherwise part with control of theTrademark; or (2) create or permit to subsist any mortgage, charge assignment by way of security, pledge, hypothecation, lien right of set-off, retention of title provision, trust or flawed asset arrangement (for the purpose of, or which has theeffect of, granting security) or any other security interest of any kind whatsoever, or any agreement, whether conditional or otherwise, to create any of the same (other than as expressly permitted under the Senior Credit Agreement (as defined inthe trade mark) in or over the trademark. Design Codes: 270511 261112 Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6441 page 13057 dated 31 July 2002 NOTIFICATION OF REGISTRATION: TMJ Volume 6461 page 20973 dated 18 December 2002 SECURITY INTERESTS: TMJ Volume 6534 dated 11 June 2004

ELECTROLUX PREMIER ECO ref.5 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2212482 Registration Number: 2212482 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 26 October 1999 (October 26, 1999) Entered Register: 05 May 2000 (May 5, 2000) Expiration Date: 26 October 2009 (October 26, 2009) Duration: 10 years International Class(es): 7 (Machinery) 9 (Electrical and scientific apparatus) 11 (Environmental control apparatus) Goods/Services: CLASS 07 . MACHINES FOR WASHING AND LAUNDRY PURPOSES; DISH WASHERS;

PURPLE TUMBLE DRIERS; WASHER DRIERS; ELECTRIC KITCHEN MACHINES, MIXERS, BLENDERS, ELECTRIC CAN OPENERS, JUICE EXTRACTORS, ELECTRIC KNIVES, BREAD MAKING MACHINES, ELECTRIC HAND WHISKS, RUBBISH COMPACTING MACHINES, WASTE DISPOSAL MACHINES; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS. CLASS 09 . IRONS; TROUSER PRESSES, TIE PRESSES; SCALES, SMOKE ALARMS, BABY ALARMS; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS. CLASS 11 . APPARATUS FOR COOKING, REFRIGERATING AND FREEZING; COOKERS, OVENS, HOBS, MICROWAVE OVENS, BARBECUES; TOASTERS, SANDWICH TOASTERS; ELECTRIC COFFEE FILTERS, ELECTRIC COFFEE PERCOLATORS, COFFEE ROASTERS, ELECTRIC COOKING UTENSILS, DEEP FRIERS, STEAMERS, KETTLES, ROTISSERIES, WATER PURIFIERS, ICE CREAM MAKERS, YOGHURT MAKERS; AIR CONDITIONING APPARATUS AND DEHUMIDIFIERS; ELECTRIC FANS; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS. Last Reported Owner: Aktiebolaget Electrolux SE-105 45, Stockholm, Sweden SE (SWEDEN) Agent Information: Withers & Rogers LLP Goldings House, 2 Hays Lane, London, SE1 2HW Last Full Publication: 19 January 2000 (January 19, 2000) In Journal: TMJ 6311 page 846 Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6311 page 846 dated 19 January 2000 NOTIFICATION OF REGISTRATION: TMJ Volume 6331 page 8933 dated 7 June 2000

ELECTROLUX PREMIER ref.6 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2201991 Registration Number: 2201991 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 02 July 1999 (July 2, 1999) Entered Register: 03 December 1999 (December 3, 1999) Expiration Date: 02 July 2009 (July 2, 2009) Duration: 10 years International Class(es): 7 (Machinery) 11 (Environmental control apparatus) Goods/Services: CLASS 07 . MACHINES FOR WASHING AND LAUNDRY PURPOSES; DISH WASHERS; TUMBLE DRIERS; WASHER DRIERS; ELECTRIC KITCHEN MACHINES, MIXERS, BLENDERS, ELECTRIC CAN OPENERS, JUICE EXTRACTORS, ELECTRIC KNIVES, BREAD MAKING MACHINES, ELECTRIC HAND WHISKS, RUBBISH COMPACTING MACHINES, WASTE DISPOSAL MACHINES; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS. CLASS 11 . APPARATUS FOR COOKING, REFRIGERATING AND FREEZING; COOKERS,

PURPLE OVENS, HOBS, MICROWAVE OVENS, BARBECUES; TOASTERS, SANDWICH TOASTERS; ELECTRIC COFFEE FILTERS, ELECTRIC COFFEE PERCOLATORS, COFFEE ROASTERS, ELECTRIC COOKING UTENSILS, DEEP FRIERS, STEAMERS, KETTLES, ROTISSERIES, WATER PURIFIERS, ICE CREAM MAKERS, YOGHURT MAKERS; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS. Last Reported Owner: Aktiebolaget Electrolux SE-105 45, Stockholm, Sweden SE (SWEDEN) Agent Information: Withers & Rogers LLP Goldings House, 2 Hays Lane, London, SE1 2HW Last Full Publication: 18 August 1999 (August 18, 1999) In Journal: TMJ 6290 page 10131 Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6290 page 10131 dated 18 August 1999 NOTIFICATION OF REGISTRATION: TMJ Volume 6310 page 769 dated 12 January 2000

SELECT EDITION PREMIER ref.7 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2200094 Registration Number: 2200094 Status: REFUSED APPLICATION (Abandoned) Status According to National PTO: ARCHIVED Application Date: 14 June 1999 (June 14, 1999) International Class(es): 6 (Metal goods) 11 (Environmental control apparatus) 16 (Paper goods and printed matter) 20 (Furniture) 21 (Housewares and glass) 22 (Cordage and fibers) 24 (Fabrics) 27 (Floor coverings) Goods/Services: CLASS 06 . WINDOW BLINDS. CLASS 11 . SHOWER LINERS. CLASS 16 . WINDOW BLINDS, PLACEMATS, TABLECLOTHS. CLASS 20 . SEAT CUSHIONS AND PADS, CURTAIN RINGS (NON-METAL), CURTAIN RODS, WINDOW BLINDS, PLASTIC DECORATIVE FIGURINES, MATTRESS PADS. CLASS 21 . BATH ACCESSORIES IN CERAMIC, GLASS AND PLASTIC, NAMELY CUPS, TOOTHBRUSH HOLDERS, TRASH CANS, SOAP DISHES, TOILET BRUSH CADDIES, SOAP DISPENSERS, TOILET AND FACIAL TISSUE PAPER DISPENSERS, CERAMIC DECORATIVE FIGURINES. CLASS 22 . WINDOW BLINDS. CLASS 24 . BED PILLOWS, DECORATIVE PILLOWS, WINDOW BLINDS, TOWELS, FABRIC BATH MATS, DISHCLOTHS, OVEN MITTS, POT HOLDERS, FABRIC FURNITURE COVERS, SHEETS, PILLOWCASES, COMFORTERS, BED SPREADS, QUILTS, MATTRESS PADS, BLANKETS, SHAMS, BED RUFFLES, BED COVERS, DUVETS, WINDOW AND SHOWER CURTAINS,

PURPLE PLACEMATS, TABLECLOTHS. CLASS 27 . RUGS, BATH MATS (PLASTIC AND RUBBER), DOOR MATS, WALLPAPER. Last Reported Owner: Wal-Mart Stores, Inc. 702 South West 8th Street, Bentonville, Arkansas 72716, United States of America US (UNITED STATES OF AMERICA) Agent Information: Marks & Clerk 19 Royal Exchange Square, Glasgow, G1 3AE

PREMIER HAZARD ref.8 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2128190 Registration Number: 2128190 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 02 April 1997 (April 2, 1997) Entered Register: 07 May 1999 (May 7, 1999) Expiration Date: 02 April 2007 (April 2, 2007) Duration: 10 years International Class(es): 9 (Electrical and scientific apparatus) 11 (Environmental control apparatus) Goods/Services: CLASS 09 . VISUAL AND AUDIO WARNING APPARATUS; PARTS AND FITTINGS AND SOFTWARE FOR WARNING APPARATUS; SIRENS AND ALARMS; BEACONS; LENSES FOR LAMPS; SIGN AND DISPLAY BOARDS (LUMINOUS AND NON-LUMINOUS); HAZARD LIGHTS; SWITCH CONTROL AND CIRCUIT PANELS; MICROPHONES; BATTERY PROTECTORS; LOUDSPEAKER APPARATUS; AMPLIFIERS; LOUD HAILERS; SOUND OR VIDEO SIGNAL RECORDINGS; REPRODUCTION, TRANSMISSION OF RECEPTION APPARATUS AND PARTS AND FITTINGS FOR ALL THE AFORESAID; AUTOMATIC DIAGNOSTIC APPARATUS; SOFTWARE FOR PROGRAMMING MESSAGES; REMOTE CONTROL UNITS. CLASS 11 . LIGHT BARS; PARTS AND FITTINGS FOR LIGHT BARS INCLUDING SPEAKERS; LIGHT BULBS; LIGHT FITTINGS AND APPARATUS FOR USE WITH SECURITY AND SIGNAL SYSTEMS; LIGHTING APPARATUS FOR VEHICLES AND MOTOR CYCLES; SPOT LIGHTS, SEARCH LIGHTS AND FLOOD LIGHTS; MASTS AND RIGGING FOR LIGHTING SYSTEMS; TORCHES; REFLECTORS FOR USE WITH LIGHTING APPARATUS; REFLECTORS FOR VEHICLES AND MOTOR CYCLES; STROBES. Last Reported Owner: Premier Hazard Limited Sagar Croudson Elizabeth House, Queen Street, Leeds, LS1 2TW GB (UNITED KINGDOM) Agent Information: Hallmark IP Limited Sea Containers House, 20 Upper Ground, London, SE1 9BS Last Full Publication: 20 January 1999 (January 20, 1999) In Journal: TMJ 6260 page 39 Notes:

PURPLE USE CLAIM: Honest concurrent use with 684526 (3874,00791), 1589535 (6184,07619) and others.MISCELLANEOUS: Previously published in Journal 6235, page 08100PROCEEDING BECAUSE OF DISTINCTIVENESS ACQUIRED THROUGH USE Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6235 page 8100 dated 22 July 1998 PUBLICATION OF APPLICATION: TMJ Volume 6260 page 39 dated 20 January 1999 INVALID PUBLICATION: TMJ Volume 6260 page 284 dated 20 January 1999 NOTIFICATION OF REGISTRATION: TMJ Volume 6280 page 6665 dated 9 June 1999 CHANGES CONCERNING OWNER: TMJ Volume 6293 page 11521 dated 8 September 1999

MYSON PREMIER ref.9 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 1554487 Registration Number: 1554487 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 23 November 1993 (November 23, 1993) Entered Register: 24 February 1995 (February 24, 1995) Expiration Date: 23 November 2010 (November 23, 2010) Duration: 10 years International Class(es): 11 (Environmental control apparatus) Goods/Services: CLASS 11 . INSTALLATIONS AND APPARATUS FOR HEATING, VENTILATING AND AIR CONDITIONING; GAS FIRED AND OIL FIRED BOILERS; APPARATUS AND INSTRUMENTS FOR CENTRAL HEATING; BOILERS FOR HEATING AND WATER SUPPLY; RADIATORS AND WATER HEATERS; FANS; TOWEL WARMERS; PARTS AND FITTINGS FOR ALL THE AFORESAID GOODS; ALL INCLUDED IN CLASS 11 . Last Reported Owner: Rettig (UK) Limited Eastern Avenue, Team Valley Trading Estate, Gateshead, Tyne & Wear, NE11 0PG GB (UNITED KINGDOM) Registered Users Information: Potterton Myson Limited Myson House, Railway Terrace, Rugby, Warwickshire, CV21 3JH. (UNITED KINGDOM) RU083747 REGISTERED USER - UNLIMITED PERIOD Agent Information: Trade Mark Owners Association Limited 30-35 Pall Mall, London, SW1Y 5LY

PURPLE Correspondent Info: Hallmark IP Limited Sea Containers House, 20 Upper Ground, London, SE1 9BS GB (UNITED KINGDOM) Last Full Publication: 09 November 1994 (November 9, 1994) In Journal: TMJ 6050 page 7068 Notes: DISCLAIMER: Registration of this mark shall give no right to the exclusive use of the word "Premier". Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6050 page 7068 dated 9 November 1994 NOTIFICATION OF REGISTRATION: TMJ Volume 6071 page 2599 dated 19 April 1995 REGISTERED USER - UNLIMITED PERIOD: TMJ Volume 6079 page 4170 dated 14 June 1995 CHANGES CONCERNING OWNER: Volume 6142 page 11790 dated 11 September 1996 CHANGES CONCERNING OWNER: TMJ Volume 6353 page 19934 dated 8 November 2000 RENEWAL: TMJ Volume 6355 page 20904 dated 22 November 2000 CHANGES CONCERNING OWNER registered 18 January 2001 CHANGES CONCERNING OWNER updated 18 September 2005

TRICITY PREMIER ref.10 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 1245271 Registration Number: 1245271 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 02 July 1985 (July 2, 1985) Expiration Date: 02 July 2006 (July 2, 2006) Duration: 14 years International Class(es): 11 (Environmental control apparatus) Goods/Services: CLASS 11 . INSTALLATIONS AND APPARATUS INCLUDED IN CLASS 11 , ALL FOR COOLING; INSTALLATIONSAND APPARATUS, ALL FOR REFRIGERATING AND FREEZING. Last Reported Owner:

PURPLE Electrolux plc 101 Oakley Road, Luton, Bedfordshire, LU4 9QQ GB (UNITED KINGDOM) Agent Information: Withers & Rogers Goldings House, 2 Hays Lane, London, SE1 2HW Correspondent Info: Withers & Rogers LLP Goldings House, 2 Hays Lane, London, SE1 2HW GB (UNITED KINGDOM) Last Full Publication: 21 November 1990 (November 21, 1990) In Journal: TMJ 5850 page 6874 Notes: ASSOCIATED MARKS: To be associated with No. 702,566 (3858,399) and others.DISCLAIMER: Registration of this mark shall give no right to the exclusive use of the word "Premier". Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 5850 page 6874 dated 21 November 1990 NOTIFICATION OF REGISTRATION: TMJ Volume 5868 page 2205 dated 10 April 1991 RENEWAL: TMJ Volume 5935 page 5840 dated 5 August 1992 CHANGES CONCERNING OWNER: Volume 5938 page 6310 dated 26 August 1992 ASSIGNMENT: TMJ Volume 5965 page 1521 dated 10 March 1993 CHANGES CONCERNING OWNER: TMJ Volume 6339 page 12652 dated 2 August 2000 ASSIGNMENT: TMJ Volume 6443 page 14120 dated 14 August 2002

HOME-TEK PREMIER PREMIER HOME-TEK ref.11 TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2383755 Registration Number: 2383755 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 05 February 2005 (February 5, 2005) Entered Register: 16 December 2005 (December 16, 2005) Expiration Date: 05 February 2015 (February 5, 2015) Duration: 10 years International Class(es): 7 (Machinery)

PURPLE 9 (Electrical and scientific apparatus) 11 (Environmental control apparatus) Goods/Services: CLASS 07 . HAND HELD STEAM CLEANERS; HAND HELD STEAM MOPS; PORTABLE STEAM CLEANING APPARATUS; NONE BEING FOR CLEANING FLOORS OR FLOOR COVERINGS OR SOFT FURNISHINGS OR CURTAINS; FOOD PROCESSORS; CHOPPERS AND BLENDERS; FOOD MIXERS. CLASS 09 . PRESSING IRONS. CLASS 11 . FOOT SPAS; FRYING APPARATUS; FONDUE APPARATUS; COOKING VESSELS; OVENS; KETTLES; TOASTING APPARATUS; STEAM COOKERS; ELECTRIC URNS; COFFEE MAKERS; TOASTERS; FAN HEATERS; OTHER PORTABLE HEATERS. Last Reported Owner: Home-Tek International Limited Roe Head House, Far Common Road, Mirfield, West Yorkshire, WF14 0DQ GB (UNITED KINGDOM) Correspondent Info: Appleyard Lees 15 Clare Road, Halifax, West Yorkshire, HX1 2HY GB (UNITED KINGDOM) Last Full Publication: 15 April 2005 (April 15, 2005) In Journal: TMJ 6577 page Notes: SERIES OF MARKS: Application for a series of two marks. Historical Information: PUBLICATION OF APPLICATION: TMJ Volume 6577 dated 15 April 2005 CHANGE OF THE LIST OF GOODS/SERVICES: TMJ Volume 6602 dated 7 October 2005 CHANGE OF THE LIST OF GOODS/SERVICES: TMJ Volume 6604 dated 21 October 2005 NOTIFICATION OF REGISTRATION: TMJ Volume 6616 dated 13 January 2006

LG PREMIER LINE ref.12 Design Extra: and design TRADEMARKSCAN®-- United Kingdom © British Crown Copyright Application Number: 2344182 Registration Number: 2344182 Status: REGISTRATION Status According to National PTO: REGISTERED Application Date: 24 September 2003 (September 24, 2003) Entered Register: 15 October 2004 (October 15, 2004) Expiration Date: 24 September 2013 (September 24, 2013) Duration: 10 years

PURPLE International Class(es): 7 (Machinery) 11 (Environmental control apparatus) Goods/Services: CLASS 07 . WASHING MACHINES. CLASS 11 . APPARATUS FOR COOKING, REFRIGERATING, DRYING AND VENTILATING; REFRIGERATORS; DRYING MACHINES FOR DOMESTIC USE; MICROWAVE OVENS; OVEN RANGES; ELECTRIC KETTLES; ELECTRIC RICE COOKERS; OVEN VENTILATORS; COOKER HOODS; AIR CONDITIONERS; ELECTRIC COOK TOPS, HOBS. Last Reported Owner: LG Corp. 20, Yoido-dong, Yongdungpo-gu, Seoul, Korea KR (REPUBLIC OF KOREA) Correspondent Info: Reddie & Grose 16 Theobalds Road, London, WC1X 8PL GB (UNITED KINGDOM) Last Full Publication: 02 July 2004 (July 2, 2004) In Journal: TMJ 6537 page Design Codes: 260406 260402 260408 040521 260410 260114 260101 370212 370207 270302 Historical Information: CHANGES CONCERNING OWNER updated 12 March 2004 PUBLICATION OF APPLICATION: TMJ Volume 6537 dated 2 July 2004 NOTIFICATION OF REGISTRATION: TMJ Volume 6556 dated 12 November 2004

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BROWN MODULE

Preparing and Filing Trade Mark Applications

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In this Module, you will learn about filing trade mark applications at the UK Trade Marks Registry.

To complete this Module, you will need Internet access The Trade Marks Act 1994 The Trade Marks Rules 2000 Chapters 1, 2 and 3 of the Trade Marks Registry Work Manual at www.ipo.gov.uk/tmmanual-chap1-newapp.pdf www.ipo.gov.uk/tmmanual-chap2-classi.pdf www.ipo.gov.uk/tmmanual-chap3-exam.pdf The International Classification of Goods and Services – for example, at www.ipo.gov.uk/tm/reference/classguide.htm The Trade Mark Handbook (Chapter 104) “Applying to Register a Trade Mark” – available online at www.ipo.gov.uk/applytm.pdf

When you have completed this Module, you will have: read the sections of the Trade Marks Act 1994 that deal with filing applications; named the form on which trade mark applications are filed; listed the matters you should discuss with your client when taking instructions for filing; and identified possible reasons for filing for a series of trade marks

You will need about one day to complete this Module.

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The Trade Marks Act 1994

We start with the statutory provisions. You should have with you a copy of the Trade Marks Act 1994. Look at the ‘Arrangement of Sections’.

Find the sections of the Act that refer to the filing of applications, and then answer the following questions.

What must be included in the application?

What are the requirements relating to use of the trade mark for which the application is being filed?

Your client wants to register the word mark HAYSEED in respect of women’s and children's clothing, kits for making children’s clothes, fashion design services and tailoring and alteration services. Is it necessary to file more than one application to cover all these goods and services?

How is the date of filing determined?

As usual, our answers are on the next page.

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Our answers.

You should be looking at sections 32 and 33. 1.

The application must include: a request for registration; the name and address of the applicant; the goods or services for which protection is claimed; and a representation of the trade mark.

The requirement is that the application must declare that the mark is being used, or that there is a bona fide intention to use the mark.

Your client only needs to file one application - there is no requirement to file one application per class. (But note that they will need to pay the appropriate class fees.) An application covering more than one class is usually called a “multi-class application”.

The date of filing is that when the Registry has everything listed in section 32(2).

The Trade Mark Handbook

Now read section 104-041 of the Handbook. Note that, although it suggests that a letter containing the minimum requirements for filing should be enough to obtain a filing date for your client, we strongly recommend that you use an application form.

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The Trade Marks Rules 2000

Rules 5 to 11 deal with applications for registration.

Please read them now, and then answer the questions below.

On which form is an application filed?

How long after an application has been filed do you have for filing documents to support a claim to priority?

What happens if the application includes goods or services that do not fall into the Classes listed by number on the application form?

What must a non-EU applicant additionally include in the application document?

Within what period must any deficiencies in the application be corrected?

Check your answers.

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Check your answers.

Form TM3. Rule 5.

Three months from the date of filing. Rule 6(2). Claiming priority means that, where a corresponding application has been filed in a Paris Convention or World Trade Organisation country, or another country with reciprocal arrangements with the UK, and on condition that the UK application is filed within six months of the corresponding application, the UK application will be treated as if it had been filed simultaneously with the foreign application. If you would like to remind yourself of this subject, make a note to re-read the relevant parts of the Red Module.

The applicant may file form TM3A to request the amendment of the application to show the extra class or classes, paying any necessary additional class fees. Rule 8(3).

An address for service in the UK. (Following recent action by the Commission, EU applicants do not need to give an address for service, since the Registry will regard their own address as that for service if they are not using an agent.) Rule 10. NB. This is the case at the time of writing. However, the Trade Marks Registry may be doing away with the requirement for an address for service. Please make a note to discuss this with your trainer, in case the situation has changed.

Two months from notification. Rule 11.

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Taking instructions

When you file a new application on behalf of a client, there are a number of things you will need to know before filing.

Think about all the points you might need to cover when taking instructions from a client. Spend a few minutes on this.

Then write down your list of all the points you’ve thought of.

Then look at our list on the next page.

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You will need to know: What the trade mark is - a word or logo, slogan or container design, for example. Whether your client is free to use the trade mark. If your client has not yet used the mark, you should recommend carrying out a search to establish whether it is free to use and register the mark. Even if it already uses the mark, a search can be useful to identify whether there may be any conflicting trade marks already on the Register. (We discuss searching in the Purple Module.) Whether your client has a genuine right to use and register the mark in question - for example, clients sometimes seek to register the marks of trade rivals. You should ask whether your client knows of anyone else using the same or a similar mark. What goods or services your client is offering, or has a genuine intention to offer, under the mark. The full name and address of the person applying to register the mark. Who actually owns the mark (this should normally be the same as the applicant details, but it is always worthwhile confirming this with the client). Whether your client ever uses it in different forms (for example, in different typefaces or colours). Whether there is any Convention or WTO priority to be claimed from an earlier overseas application. Whether anyone else will be using the mark - for example, a licensee. Whether the client intends to use the application (or ultimate registration) as a basis for filing an International Registration. (We deal with International Registrations in later Modules.)

For your own office purposes, you must also find out: to whom you will be reporting; whether your instructing principal wants copies of the application documents; and whom you will invoice.

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Important - your duty as a trade mark attorney

When taking instructions from a client, you must be very careful to ask all the necessary questions to give the best possible advice to your clients. It has been held (Halifax Building Society v Urquhart-Dykes and Lord RPC [1997] issue 2 page 55), that: ‘The trade mark agent is not under a duty to give commercial advice as such, but he is under a duty to keep his client informed of the legal problems which may arise and his duty extends to warning his client to consider any commercial problems which may arise as a result of the legal problems which he, as a trade mark agent, should reasonably discern. His duty also extends to informing his client of any matter in relation to which he needs instructions on the facts to give proper advice. If, of course, the client fails to give any such instructions despite being asked, then the trade mark agent has fulfilled his duty. But if he fails to ask the client a question which he, as a trade mark agent, ought to see was important, it is not open to him to say later “the client never told me”. The reason that is so is because the client may not have the expertise to know what facts matter and what do not. The client is entitled to expect his agent to ask for the information necessary to give proper advice.’

Further on in the judgment, Mr Justice Jacob says: ‘A trade mark agent's job in making or pursuing an application normally involves finding out just what his clients do.’

We cannot emphasise enough the importance of these comments. It is fundamental to your duty as a trade mark attorney that you understand what your client is doing and (as far as they are willing to tell you) why they are doing it. Sometimes you – and even your trainer – may be shy or embarrassed about asking the client a lot of questions. Our advice is: do not be – practically all clients like and appreciate explaining their business! And as a supplement to this, most client companies nowadays have an Internet website (which should not be too difficult to locate even if you do not know the actual URL), which almost always contains very useful information on the company’s activities and plans.

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The application form Copies of form TM3 are available, free of charge, from the UK Trade Marks Registry, and you can also find them on the Intellectual Property Office website at www.ipo.gov.uk/tm/howtoapply/index.htm. It is not compulsory to use these; the Registry will accept, for example, wordprocessor-generated forms, provided these show the same information in the same order. Application forms are normally typed, but the UK Trade Marks Registry will accept hand-written forms (unlike the Community Trade Marks Office, which requires that forms be typed). As you can see, they can also be completed online.

Information published by the Intellectual Property Office

To assist people in completing their application forms, the Trade Marks Registry publishes a helpful booklet called “Applying to Register a Trade Mark”. It is available at www.ipo.gov.uk/tm/info/applying.pdf.

Please read S]section 2, which deals with completing the UK application form.

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The booklet gives section by section guidance on what to put in each box on the application form. However, we can look at some of these points in more detail. You will not always need to complete parts 3, 4, 5, 6 or 7. (We discuss transformations under the Madrid Protocol in another Manual.)

The trade mark In the Red Module, we looked at the forms a trade mark may take, and at how the Trade Marks Act 1994 defines a trade mark. So you are already aware of the different forms of trade marks that a client may want to protect.

The representation of the trade mark

Please go to the Trade Marks Registry Work Manual Chapter 1 at www.ipo.gov.uk/tmmanual-chap1-newapp.pdf Please read paragraphs 2.3 now.

Size of representation The Registry only requires that the representation of the mark be a clear graphical representation. In practice, it should be no larger than A4 size. However, if your client wants to file an International Registration in due course, the representation must fit into the 8cm x 8cm box, to meet the specific requirements of the International Registration form.

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Graphical representation

The Trade Marks Registry has issued some guidance to clarify, as far as possible, what constitutes an acceptable graphical representation of a mark.

Go back to the Intellectual Property Office website, to www.ipo.gov.uk/tmmanual-chap1-newapp.pdf. Please read paras 4.4 and 4.5 carefully, then answer the following questions. 1.

If you are filing an application for a mark that consists only of a specific colour, what will the Trade Marks Registry accept as a graphical representation?

What is acceptable for a mark where colour is an element of a device or pictorial mark?

What should you file where a three-dimensional mark is involved?

Now look at the answers.

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You may provide a specimen of the relevant colour(s) in the box at section 2 of Form TM3, and indicate in section 4 of the form that the mark consists exclusively of the colour shown Or indicate in the box at section 2 that the mark consists exclusively of named colour and define the colour by reference to a widely available colour standard, such as Pantone ®.

You may File a representation in colour (this is preferable – but note that in this case, you can’t file by fax) File in black and white, but identify each colour element by a widely available colour standard 3. You should file a “pictorial representation”. Specifically, the Trade Marks Registry says: “If the subject matter consists of the overall shape of the goods, or a container, it is difficult to represent the shape by a single front view which may not show whether it has a round profile or is four sided. Unless the subject matter can be demonstrated by a single perspective view, multiple views of the shape are necessary (no more than six as a general rule). The more complex the shape, the more likely it is that multiple views will be necessary. When multiple views are shown, each view should be named, for example, front view, side view. Three-dimensional marks may be represented by a picture, or pictures, and words which describe the subject matter of the proposed registration. However, attempts to put forward pictures as mere examples of the shape described in words usually do not meet the requirement for ‘a fixed point of reference’. In such cases, the application may be refused a filing date until any deficiency is corrected. If the subject matter consists of only part of a shape (such as a lid for a container), or the position of something (such as a label) attached to a threedimensional object, it will not usually be necessary for the representation of the mark to show more of the shape than is necessary to disclose the subject matter, in these examples, the shape of the lid or the position of the label.”

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Important Above all, please note that you should Make it reasonably practical for others to understand or visualise the mark and Not assume that the reader has any prior knowledge of the mark

Series marks It is possible to file for a series of trade marks in one application. To be acceptable as a series, the marks must have a common identity, in all material particulars.

Read section 41 of the Trade Marks Act 1994 now.

Then please take a look at the Trade Marks Registry website www.ipo.gov.uk/tm/reference/workman/chapt6/sec34.pdf and read part 34.

Now please make a list of all the circumstances you can think of where it might be appropriate to file for a series of trade marks. Then compare your list with ours.

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A series of marks might be appropriate where your client uses the same trade mark in a number of different colours your client uses the trade mark in a fancy type-face - you can normally file for both the type face and plain letters in one application a figurative mark with minor variations – for example, of an animal in different “poses”

It is, of course, unlikely that the Trade Marks Registry would accept all of the examples listed above as series. However, filing for a series gives you and your client a chance to see which forms the Registry will accept - the Registry does not make additional charges for a series of marks.

Remember that while you can always delete marks from a series, or split the series out, you cannot add to them.

We look at official objections, and countering them, in the Orange Module.

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Goods and services The goods or services to be covered by the registration must be specified on the application form. You need to show the class number(s) in a column on the left hand side of the form, then the goods or services to the right. You should try to list the goods or services alongside the relevant class and in class order. (However, provided you have listed all the goods or services to be covered it should be possible to sort out any errors in choosing the correct class later.) Bear in mind that your client should have a bona fide intention to use the mark on the full range of goods and services claimed, if not already using it. But, as with the form of the mark filed, you cannot add items once you have filed the application if the effect is to broaden the scope of protection – you can only delete them, or replace them with more specific terms. This prohibition is in section 39.

To find out about the Trade Marks Registry's approach, read paragraph 3.1(c) of the Work Manual, Chapter 1 at www.ipo.gov.uk/tmmanual-chap1-newapp.pdf

Then please read pages 15-23 of the Trade Marks Registry’s “Applying to Register a Trade Mark” at www.ipo.gov.uk/applytm.pdf, to see a detailed list of goods and services classified according to the International Classification Index (Nice Agreement), as interpreted by the UK Office. There is more information in Chapter 2 of the Trade Marks Registry Work Manual, and we will look at that later on.

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Drafting a specification of goods and services

Start by imagining that you are framing a specification of goods and services for a client.

Make a note of how you would make sure that you have included all the goods or services that are of interest to your client.

Our ideas are on the next page.

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You could Ask your client to describe their goods or services (although sometimes your client's explanation may be either too technical or too vague to be of much help - remember that the examiner at the Trade Marks Registry will need to understand what the goods or services are so that he or she can determine whether they included in the right class) Look at your client's literature - for example, catalogues or brochures Look at your client’s website Look at applications for similar goods in the same Class in The Trade Marks Journal, (available at www.ipo.gov.uk/tm/tmj/index.htm) Use the search facility on the Trade Marks Registry’s website at www.ipo.gov.uk/tm/dbase/goodsclass/index.htm Examine your office files to see if the same applicant has filed other applications in the same Class - which will provide helpful precedents Speak to the Trade Marks Registry. Their telephone classification advice service is very useful and customer friendly. And don't forget that you might need to include ‘parts and fittings’ if filing for goods the usual wording is ‘parts and fittings for all the aforesaid goods’ at the end of the claim.

Go back to The Trade Marks Journal at www.ipo.gov.uk/tm/tmj/index.htm, and look at some of the published specifications when you've finished this Module. You'll be able to see the types of wording accepted and how punctuation is used to separate items.

From time to time, Registry practice on terms that it will accept in specifications changes. Details of such changes are published in The Trade Marks Journal, at www.ipo.gov.uk/tm/notices/regular/index.htm, and you should ensure that you keep up to date with these. For example, in March 2006, the Trade Marks Registry announced that “legal services” are henceforth in Class 45, rather than Class 42 as previously.

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Drafting specifications that will give most protection to your client’s mark is a skill, and you will learn most by practising. However, there are various ways of approaching a specification, and we will give you some guidance now. You can think in terms of different approaches – ‘Read the catalogue’ ‘Main claim’ ‘Class heading’

The ‘Read the Catalogue’ approach This is a traditional – if slightly old-fashioned – way of doing things. You sit down with the client’s literature and website, and list everything that appears in it. You then classify the goods according to the International Classification – and there you have your specification. The advantage of doing this is that You should cover everything your client is currently doing. The disadvantages are that You may exclude areas that your client is hoping to move into in the future – remember Halifax Building Society v Urquhart-Dykes and Lord The specification may be too restrictive. As an example, if your client is making, and you specify “dolls for girls”, would this cover dolls for boys? And what about board games involving dolls? (In fact, this would probably cover boys’ dolls as they are similar goods, but not the board games.)

BROWN The “Main Claim” approach This tries to frame an inclusive description, in general terms, of the area of interest to the client. So, to continue the “dolls” example, you would file for “Games, toys and playthings” in Class 28. The advantage is that this avoids the lengthy “list the catalogue” approach. The disadvantages are that The Trade Marks Registry may not understand the specification You may produce a specification which is open to a third-party challenge on the grounds that your client does not use, or intend to use, the mark for the full range of goods. (As an example, a court has held that the terms ‘software’ and ‘printed matter’ were too broad.) If you are filing a Convention application abroad, based on such a specification, you will invite objections from more formalistic jurisdictions, such as the US, Japan, Korea or Singapore, for example. The ‘Class heading’ approach We are using this increasingly as the UK moves into line with our European partners, and we can call it the ‘Continental model’. You may notice that in specifications filed by French or German agents, they often list the class heading as the specification.

Please take a look at Chapter 2 of the the Trade Marks Registry Work Manual, para 5.1.15 to read about the Trade Marks Registry’s approach.

Then please make a list of any advantages and disadvantages you can see to taking the “Continental model” approach. Our list is on the next page.

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How did you get on? The advantage is that This is very easy to do – it requires little thought or skill The disadvantages are that There is so little thought or skill involved that it is easy to get something wrong or put goods or services in the wrong class. The Trade Marks Registry allows some changes, so this does not always matter – but, as an example, “valves” can fall into classes 7,9 or 10 – and the Trade Marks Registry does not allow transfers between classes. In recent years, the Trade Marks Registry, as well as OHIM, has rejected specifications saying “All goods in Class 9”. And there is a risk that using a class heading could be open to challenge in the courts – namely, that using the class heading does not actually include all goods in the class. The specification may be open to attack both on the grounds of actual non-use, and lack of a bona fide intention to use.

Note Also, you should be aware that such broad headings clutter up the Register and make searching and comparing marks much more difficult (we discuss this further in the Purple Module).

Please go to www.ipo.gov.uk/tm/reference/workman/chapt5/chapt5.pdf and read para 5.1.18, to find out about the Trade Marks Registry’s approach to “All goods” specifications.

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Combining the approaches In practice, a combination of the three approaches may be best. That is, using broad terminology, as in the main claim or class heading approach, followed by a list of detailed items, as in the read the catalogue approach.

Bona fide intention to use You have seen that you have to sign a declaration that the mark is being used or the applicant has a bona fide intention to use. But how can you sign such a declaration when you have no knowledge of the applicant, and only garbled last-minute instructions from abroad? We can’t give you a definitive answer on this, but recommend that you talk to your trainer about your office’s practice. (Many offices will take the view that the instructing associate believes the mark to be in use, or that there is an intention to use it. But does your associate know that they are expected to ask the client this?)

The Applicant Applications should normally be filed in the name of the person who will actually own the mark and be using it. An applicant may be, for example, an individual (sole proprietor) a partnership a private limited company a public limited company.

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The Trade Marks Act 1994

Section 23 of the Trade Marks Act 1994 deals with co-ownership of registered trade marks and section 26 deals with trusts. Read them now. Note that the Act does not prohibit the ownership of a trade mark registration by a trust, it merely states that notice of it cannot be entered in the Register.

Will anyone else be using the mark?

If so, you may need to talk to your client about co-ownership, and formalising the client’s consent to such third party use, by granting licences. (We look at this subject in the Gold Module.) You should check that your client is the right person to apply to register the trade mark. It may be that your client is really the licensee or an agent, importer or distributor- for example for an overseas proprietor; in this case, the mark should be registered in the name of the true proprietor, not your client. There are also occasions when clients have seen someone else using the trade mark for similar - or even the same - goods or services, and have thought that the mark would be very suitable for their products. In this case, you need to warn them that they could be subject to action to prevent passing off or infringement, and they should find a new trade mark, which you should search for them. (Some agents would refuse to act for such clients. Bear in mind that, at their broadest interpretation, the anticounterfeiting and criminal provisions sections of the Trade Marks Act 1994 apply also to trade mark agents if they knowingly aid a criminal act, or should by due diligent enquiry have known.)

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More information

The Trade Mark Handbook contains more information and guidance on filling in the application form. Please read paragraphs 104-074 to 104-107 now, making notes of anything you would like to discuss later with your trainer.

An example You have just received the following letter from a new client. Dear Sir / Madam Trade Marks I am starting a new business selling computer hardware and software, as well as instruction manuals. I would like to register my trade mark ASTRELLA. Please go ahead and apply to register it for me. Yours faithfully, Stella Somerville.

Make a note of any extra information you might need before you can file an application on her behalf. Our ideas are on the next page.

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The following information will be helpful.

Is the mark being used yet?

Would your client like you to carry out a search?

Will she use the mark in any other form?

Who will actually own the trade mark?

What is her address?

Will anyone else use the mark?

Will she be forming a limited company?

Are any goods (or services - for example training services, or programming or software design) other than the ones she mentioned, to be covered?

What Class do the goods fall into? (Look in the International Classification Guide, which you should have with you. You can also phone the Trade Marks Registry’s classification service.)

Are the manuals electronic only (in which case, class 16 may not be required)?

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Apart from the form TM3, there is something else you need to do.

V Think for a moment about what else you need to do. Then read on.

You need to pay the fees, including any additional class fees for the application, depending on how broad a range of goods and services your client wants to cover.

Many practices maintain a deposit account at the Intellectual Property Office and request that fees are debited from it.

At the time of writing, fees are £200 for the first class, and £50 for each subsequent class. The fees can be paid with the application, whereupon the application will go straight to the examination stage at the Trade Marks Registry. Alternatively, you can wait until the Registry notifies you that the fees need to be paid, and then you have two months within which to pay them. If you use the online filing facility at the Intellectual Property Office, you also have a two month term for sending the necessary fees.

In some practices, it is usual to file a covering letter with the application, but this is not essential.

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Where and how to file the application

Please turn to the Trade Mark Handbook and read parts 104-006 and 104-019 to 104020. Note that you can file By hand at Newport By hand at the London office By post at Newport or London By courier at Newport or London By fax at Newport. Using the online application forms at the Intellectual Property Office website Using “e-filing services” for large users (please make a note to talk to your trainer about this facility when you have finished this Module).

Filing by hand The main entrances at Newport and London are staffed at all times.

Filing by post Always remember that the filing date is the date that your documents are received at the Intellectual Property Office. There are currently “postal rules”, which are explained in the parts you have just read. Properly addressed documents sent by first class post, and posted in time for next-day delivery will be allocated as the filing date, the date following that of posting.

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Filing by fax Please be aware that filing by fax carries the risk of incomplete or inaccurate transmissions. Partly to counter this difficulty, the Intellectual Property Office does offer a “fax back” facility, where it will fax back to you exactly what it has just received.

Filing online This facility is intended mainly for occasional applicants, and is also useful for urgent applications if you are away from your office. It can be used 24 hours a day (unless the site is down for maintenance). It has built-in help pages, and automatically checks the application. It will generate an automatic email receipt. The Trade Marks Registry will send a further email giving the filing date and application number, after it has recorded the application on the Trade Marks Registry’s filing system.

You have almost reached the end of this Module. When you talk to your trainer, you should ask, if your office has a trade marks practice, to see examples of application forms. It would also be very useful to you if you could sit in on a meeting with a client who is giving instructions for a new filing, to see how more experienced colleagues handle this. After the meeting, you could try completing an application form, including designing a specification of goods or services, to see how you get on. You could also ask what arrangements your office has for paying fees at the Trade Marks Registry. Now try the quiz. 28

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Test Yourself

You have just received written instructions to file a new UK trade mark application from an agent in the Ukraine. The application is for a device mark, and is a Convention Priority application which must be filed within the next two days. A copy of the mark is enclosed, but you cannot tell which way up it is supposed to be. You think it unlikely that the Registry will allow you to change the mark after you have filed it, on the grounds that you filed it upside down. You are unable to contact the agent by phone, fax, e-mail or telex and do not have time to correspond by post. How can you ensure that you file the correct form of the mark without losing the Convention Priority date?

Your secretary has just gone home sick, and you have received urgent instructions to file an application today. Your computer has crashed. Can you file a hand-written application, and will the Trade Marks Registry accept it by fax?

Using the International Classification, decide which Class the following goods/services fall into: i) Painkillers for human use ii) False teeth iii) Lemon scented bathroom cleaner iv) Letter openers v) Juke boxes vi) Fridge freezers vii) Raspberry ripple ice cream viii) Dolls' clothes ix) Estate agencies

Can you file an application to register a mark by e-mail?

Check your answers

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The answers.

You should file for a series of marks, showing the mark each possible way up. When the agent has told you which way up the mark is intended to be seen, you can file a request that the other forms of the mark be deleted from the series.

The Trade Marks Registry will accept it, provided that the representation of the mark is clear. A fax is acceptable, provided the mark is not in colour.

i) Class 5 ii) Class 10 iii) Class 3 iv) Class 16 v) Class 9 vi) Class 11 vii) Class 30 viii) Class 28 ix) Class 36

Yes.

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ORANGE MODULE

Initial Stages of Prosecuting Trade Mark Applications

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You should have completed the Brown, Khaki and Ultramarine Modules before starting this one.

In this Module, we look at what happens immediately after a trade mark application is filed, including initial queries and formalities, up to the point where you receive the Examination Report.

To complete this Module, you will need copies of The Trade Marks Act 1994 The Trade Marks Rules 2000 Trade Marks Registry Work Manual Chapter 3 (updated July 2004) at www.ipo.gov.uk/tmmanual-chap3-exam.pdf Trade Marks Registry Work Manual Chapter 1 (updated October 2004) at www.ipo.gov.uk/tmmanual-chap1-newapp.pdf Trade Marks Registry Work Manual Chapter 2 (updated September 2004) at www.ipo.gov.uk/tmmanual-chap2-classi.pdf

When you have completed this Module, you will have Identified the form to be filed when filing a new trade mark application Listed the information that you must supply in order to secure a filing date Read the relevant sections of the Trade Marks Registry Work Manual Stated what happens if you have listed goods or services in the wrong class Identified the time limit for filing priority documents.

This Module will take about half a day to complete.

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Preliminary formalities

We talked about filing UK trade mark applications in the Brown Module. As you should remember, they can be filed at: London; or Newport. By Post Courier Hand E-mail, including electronic bulk handling Fax.

Spend a few moments thinking about what you learnt from the Brown Module, and then write down what form you have to file, the information which must be included on it, and what else you have to do to secure a filing date. Then read on.

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Applications must be made on form TM3, and contain A request for registration of a trade mark The name and address of the applicant A statement of the goods and/or services for which your client wishes to register the mark A representation of the mark A statement that the mark either is being used by, or with the consent of, the applicant, or that the applicant has a bona fide intention of so using it As well as The appropriate application fee and any class fees. If you didn’t remember all these, make a note to review the Brown Module, when you have finished this one. These are important!

Please look at section 32(2)(d) of the Trade Marks Act 1994. To be acceptable, a mark must be capable of being represented graphically, and the Trade Marks Registry will firstly check that whatever you have filed complies with this essential requirement. It will not accept applications that don’t comply, but will allow you two months to make corrections.

You should have a copy of the Trade Marks Registry Work Manual, chapter 1 with you or online. Please read part 3 now, as it explains the Registry’s current practice in this area. When the Trade Marks Registry has accepted the application, it inputs it into its own computer system, and issues a computer-generated receipt to the applicant (or to the agent if appropriate). When you file an application, you should make a diary note to check that you actually receive the receipt.

ORANGE The filing receipt When you have filed a new UK trade mark application, you will receive, normally within a couple of weeks, the filing receipt we mentioned above. This is important, because it will show: the application number The application will keep this number throughout its life, and if and when registered, it will become the mark's registration number. You should always refer to the number when you are contacting the Trade Marks Registry. the filing date If and when the mark is registered, the rights granted by registration date from the filing date. The first renewal will be ten years from the filing date, not the date when the mark is actually entered on the Register. And if there is a dispute over prior rights, an early filing date can be useful for your client. If applications for two very similar or identical - trade marks are filed, it will be the first-filed application that takes precedence. If the owner of the first-filed application wishes to argue that he used the trade mark first, the matter will be decided either at opposition or via revocation proceedings - normally a time-consuming and costly business. So an early filing date is an advantage. the application details that you put on Form TM3 Check these to make sure that they are correct. If they aren't - tell the Trade Marks Registry at once. Occasionally, there may be typographic or transcription errors in the filing receipt, which it is your duty to notice and deal with. Important Your office should have a reminder system to tell you if a filing receipt is due. If not, it's good practice to make a note for yourself to check that you receive the receipt. They do occasionally get lost, forgotten or sent to the wrong address. It is also useful to check the Registry’s website; if it contains details of your application, but you haven’t received the receipt, you can conclude that the receipt has gone astray. When you have received the filing receipt, you should report this, and copy it, to your client. Electronic filing When you file electronically, you will normally receive the receipt within hours. Check your email for it.

ORANGE We have already mentioned that the first thing the Registry looks at is the representation of the mark. It then goes on to consider a number of other areas. (Remember the Brown Module, where we talked about delayed payment.)

The Examination Process After the filing receipt has been issued, the application joins a queue of applications awaiting examination by the Trade Marks Registry. Sometimes, before you receive the first Examination Report, you may get an initial query, particularly if the Trade Marks Registry believes the goods or services may have been attributed to the wrong Class.

Please read paragraph 2 of Chapter 2 of the Work Manual – “Purpose of Classification”. If you did, for any reason, list items in the wrong class (that is, a class they don’t belong in) - perhaps because of a typing error - you should be able, if the application already includes goods or services in that class, to transfer the incorrectly classified goods or services into the correct class, without any need to pay extra fees. If you have not already listed the correct class, you will be able to add it, provided your client is willing to pay the extra fees. The Trade Marks Registry will frequently send you a query about other aspects of the classification of the goods or services claimed (in particular where they do not understand a term used in a specification and are therefore unable to decide which class it should fall into) before the application is examined (a practice which used to be more frequent). Usually, however, the Registry will raise any queries about the classification in the Examination Report.

Now please read part 4 of Chapter 2 of the Work Manual – “Legal framework and general principles”. You may also receive queries about allegedly inadequate graphical representations of the mark applied for (we discuss section 32(2)(d) above).

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Wide specifications

In the Brown Module, we talked about drafting specifications of goods and services.

Please read paragraphs 4.1.7 to 4.1.9 of Chapter 2 of the Trade Marks Registry Work Manual again now. An examiner – or the formalities section – may raise queries over the specification before they send the main examination report. If you receive an objection of this type, and believe that the wide specification is justified, you should send the Trade Marks Registry some of the client’s literature (brochures, catalogues, website material and so on) that describe the range of goods or services offered by your client, whether under the mark applied for, or another mark.

Ducker’s objections

Please read paragraphs 4.1.10 of Chapter 2 of the Trade Marks Registry Work Manual.

Then try to answer the questions on the next page.

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What does section 3(6) of the Act say?

What example of this is referred to in this paragraph?

In the Roadrunner case (1996 FSR 818), Walker J. quoted comments from another case. What was that case?

And what were the comments quoted? Try to remember at least the gist of them.

In DUCKER'S trade mark (45 RPC page 402), the Master of the Rolls, Lord Hanworth, considered the meaning of bona fide. What did he think it means?

In what circumstances is the Registrar likely to raise objections under Section 3.6?

The answers are on the next page.

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Check your answers.

A trade mark shall not be registered if or to the extent that the application is made in bad faith.

Circumstances where the applicant has no bona fide intention to use the mark, in relation to the whole range of goods and services listed in an application.

Mercury Communications case (1995 FSR 850).

“In my view it is thoroughly undesirable that a trader who is in one limited area of computer software should, by registration, obtain a statutory monopoly of indefinite duration covering all types of software, including those far removed from his own area of interest. If he does he runs the risk of his registration being attacked on the grounds of non-use and being forced to amend down the specification of goods.”

“…A real intention in the sense which I have already explained and if it is not found that there was a real resolve, intention and purpose, then it is shown that originally the mark was put upon the Register at a time when it ought not to have been put on, because there was not a sincere purpose to make use of the mark in connection with goods.”

“In extreme cases, or where vague and wide terminology is used”.

Now read on.

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Priority

We discussed the meaning of priority claims in the Red and Brown Modules. Claiming priority means that, where a corresponding application has been filed in a Paris Convention or World Trade Organisation country, or another country with reciprocal arrangements with the UK, and on condition that the UK application is filed within six months of the corresponding application, the UK application will be treated as if it had been filed simultaneously with the foreign application. This gives an advantage over applications which might have been filed in the period between the overseas application and the UK one.

The Trade Marks Registry expects you to file supporting documents within three months of the application, if you did not file them at the same time as the TM3.

The Registry will check the supporting documents to make sure that The mark is the same as the one you have applied for The applicants are the same in both cases The date of the UK application is within six months of the foreign one At least some of the goods applied for in the UK are the same as on the foreign application.

Those are the basic checks that the Trade Marks Registry carries out. It will only carry out more detailed checks when they come to search the mark against earlier applications and registrations.

If they find that there is another mark, filed in the period between the priority date and the UK date of filing, they will go on to carry out more detailed checks. (They may request translations of the supporting documentation, when they issue the examination report.)

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They will then check whether the priority claim is valid whether there is any conflict between the goods and services of the UK application. If a valid priority application covers all the goods and services in the other conflicting application, the priority application will be allowed to proceed, and will be cited against the conflicting application.

If the priority claim does not in fact cover any of the goods and services in the other application, it is not relevant.

If there is a conflict in only some of the goods or services, the applications will each be cited against theother.

Now look at Chapter 3 of the Trade Marks Registry Work Manual. Please read section 50 – “International Convention (I.C.) priority claims”.

Next, we will talk about series of marks.

ORANGE

Series of marks You know that you can file for a series of marks, where the marks are the same in their material details. You may find that you spend a great deal of time arguing as to whether marks do indeed constitute a series. Generally, the Trade Marks Registry will object if the examiner thinks that it would be necessary to carry out separate searches on the marks in the series.

What happens next? You can usually expect to receive the first Examination Report a few months after filing. Often, it will arrive within a few weeks. Very occasionally some applications get lost within the Registry after you have filed them. If your office handles trade mark applications, it should have a procedure for monitoring the progress of applications and chasing them up if necessary. When you have finished this Module, ask your trainer how your office does this.

Examination Units The Trade Marks Registry is divided into Examination Units. They consist of examiners, support staff and a senior officer. The Examination Units deal with an application through to publication.

Important Note that Examination Units use their own references to assist in handling correspondence. You will find these on the letter sending the examination report, and must make sure that you know what these are, and that you quote them when you correspond with the examiner.

ORANGE

You have almost reached the end of this Module. Don't forget to make notes of any points you would like to discuss with your trainer afterwards.

If your office has a trade marks practice, ask about the systems that are in place to check that a new trade mark application has not been mislaid and to ensure that you have received the filing receipt.

Now move on the quiz.

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Test Yourself

Which Section of the Trade Marks Act 1994 tells us what the essential requirements for an application to receive a filing date are?

What happens if you list goods or services in the wrong class?

What does the Work Manual say are the purposes of the classification guide?

Which section of the Trade Marks Act 1994 provides that the Registrar’s decision on classification is final?

If you have not filed priority documents with the form TM3, within what time limit must you file them?

What happens if you fail to file the priority documents within the time limit?

Check your answers.

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The answers.

Section 32(2).

If the application already includes goods or services in that class, you should be able to transfer the incorrectly classified goods or services into the correct class. If you have not already listed the correct class, you will be able to add it, subject to the payment of the extra fees.

The classification guide Assists the registry carrying out efficient searches of the register Allows businesses to check whether there are registered marks that conflict with their marks Allows businesses to check whether there are registered marks that conflict with marks they are using or propose to use in respect of particular goods or services.

Section 34(2).

Within three months of filing the application, under Rule 62. Extensions are allowed, with good reasons.

The claim for Convention Priority collapses, but the application remains otherwise valid.

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JADE MODULE

Next Stages of Trade Mark Applications, Registration and Renewal

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Before you start this Module, you should have completed the Orange Module, which looks at preliminary formalities. In this Module, we consider what happens after you have received the first Examination Report. We also look, very briefly, at the renewal of a trade mark registration in the UK.

To complete this Module, you will need Internet access The Trade Marks Act 1994 The Trade Marks Rules 2000 Trade Marks Registry Work Manual, Chapter 3 (updated July 2004) at www.ipo.gov.uk/tmmanual-chap3-exam.pdf Trade Marks Registry Work Manual, Chapter 1 (updated October 2004) at www.ipo.gov.uk/tmmanual-chap1-newapp.pdf Trade Marks Registry Work Manual, Chapter 2 (updated September 2004) at www.ipo.gov.uk/tmmanual-chap2-classi.pdf The Trade Mark Handbook

When you have completed this Module, you will have Listed potential ways of overcoming objections raised on absolute grounds Identified the essential components of a letter of consent Noted means of overcoming Registry objections on absolute grounds

This Module will take about two days to complete

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The examination report

An examination report is signed by the examiner who has looked at the application. It usually includes a heading, showing the application number, the mark, the applicant and the Registry's own reference the deadline within which you must reply (after which the Registry will assume that the applicant does not want to pursue the application) whether the mark is acceptable for registration under the Trade Marks Act 1994 whether there are any objections to registration of the mark as filed (if none, there will not be a deadline) any queries concerning the specification of goods and services

What is the examiner looking for?

Make a list of all the points you think that an examiner might need to check when examining a new trade mark application. Then compare your list with ours.

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Firstly, the examiner considers

Is the mark a trade mark? That is Can it be represented graphically? Is it capable of distinguishing the goods or services of one person from those of another trader? Is the mark distinctive? That is Not descriptive Not a widely used geographical name Not a common surname Not a common sign in the trade or business in question, or one that should be kept free for all current and future users? Does the mark consist of a shape which Has a useful purpose? Adds value to the goods? Is the mark Deceptive to the public? Immoral or offensive? Illegal? Is the mark an emblem which is protected, and does not have the owner’s permission to use? For example, The symbol of an international organisation, such as the Red Cross A coat of arms Royal insignia Does the mark belong to someone other than the applicant? For example, A picture of a famous building A work of art Does the applicant genuinely intend to use the marks on all the goods or services in the specification?

These are called absolute grounds for refusing an application.

JADE Relative grounds Relative grounds for refusal are those where the examiner compares the mark applied for with earlier trade marks. These include Earlier UK registrations Earlier UK applications Community trade marks Marks applied for under the Madrid Protocol designating the UK where the marks applied for are the same as, or similar to, the earlier trade mark and the specification is for the same, or similar, goods or services.

Objections So, you have now seen that the Trade Marks Registry may object to an application on absolute grounds - that is, it may object that the mark is not distinctive enough to merit registration. It looks at this in terms of the Trade Marks Act 1994, which examiners interpret by reference to the Registry's current practice, as published in the Trade Marks Registry Work Manual, and guidelines issued by the UK courts and the Appointed Person, as well as the ECJ. relative grounds - that is, the mark applied for conflicts with an earlier application or registration.

The future of examination on relative grounds At the time of writing the Trade Marks Registry is considering whether it will continue to examine applications against earlier trade marks. Many UK trade mark owners have found that their applications are being blocked by Community applications or registrations (which are not examined on relative grounds), and this places them at a disadvantage in some instances. It is possible that in future, as happens in a number of other European countries, marks will be examined only on absolute grounds. It would be the responsibility of trade mark owners to monitor applications and oppose them if they feel there is a conflict.

Look at Section 8(1) of the Trade Marks Act 1994 now, to see how the Act provides for the abolition of examination on relative grounds.

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Dealing with the examination report

If the Trade Marks Registry has raised objections to your client's application, there are several ways you can respond:

by correspondence This means writing to the Examiner with your arguments. You can also use this to explore potential ways round objections. We discuss this in more detail later.

at a Hearing You can put forward oral arguments and discuss the mark face to face with a Hearings Officer. You can do this either in person, or via a video conference link with the Trade Marks Registry in Newport. Again, we will look at this later.

When you attempt to resolve matters by writing to the Examiner, you still have the right to go to a Hearing - but after a Hearing, your only option, if your arguments are unsuccessful, is a formal appeal. This is made either to the Appointed person (we will talk about this later) or to the High Court, Chancery Division.

So we recommend that you begin with correspondence. (As a preliminary, you may be able to phone the Examiner to discuss the strength of any objections raised. Many examiners are very helpful when approached this way. You will get to know the Examiners who are happy to respond to this sort of approach - but don't be too discouraged if you don't get the answer you were hoping to hear. Examiners aren't always right!)

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Make sure that you

Report to your client Don't forget to tell your client what is happening. Most clients will want to continue with an application unless you've advised them that there really doesn't seem to be any way to overcome an objection. But sometimes they may change their minds about an application and instruct you to withdraw it. If you are acting as their agent it is your duty to deal with the application in line with their instructions. This may be particularly important if you are acting on instructions from another agent (for example, a solicitor or an overseas attorney).

Reply in good time Remember also that the Trade Marks Registry does expect a response within the time they have given you to reply. In practice they usually allow, provided you give them a good reason, at least one extension of time; this can be essential if, for example, you are waiting for instructions from abroad, or for your client to provide you with evidence of the use of the trade mark. But don't always expect the Trade Marks Registry to keep granting extensions of time just because you haven't got round to replying. It's bad practice to keep asking for extensions without good reason.

(We will talk about applying for extensions of time later on.)

Next, we’ll consider ways you may be able to overcome examiners’ objections.

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Overcoming objections on absolute grounds

We looked at distinctiveness in the Khaki Module. If you want to remind yourself of what we said then, please spend a little time looking back at it now.

Remind yourself of Sections 1, 3 and 4 of the Trade Marks Act 1994 now. Remember that the law in this area is changing quite fast. For example, as you read in the Khaki Module, case law does affect very substantially UK examination practice and procedures.

Then think about ways in which you might be able to overcome objections raised by the Registry. As well as thinking in general terms, consider points you may have heard discussed by colleagues, for example. Write down as many ideas as you can think of. Then look at our ideas.

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Compare your ideas with ours.

Case law There may be a case - or cases - which are analogous to your application, or where a point was made which you could usefully quote to strengthen your argument. But the Trade Marks Registry does not always follow precedents set by its own decisions, especially if it considers that a previous decision was not, or is no longer, good law. Each case is decided on its individual merits.

The Trade Marks Registry's own practice Sometimes you will find that referring to the Trade Marks Registry's own published practice, in Chapter 3 of the Trade Marks Registry Work Manual, will help you. The Examiner may have overlooked a point - or the Registry's guides may help you to see a way forward. (Remember that practice changes over the course of time.) You can find updated practice guidelines in the PAN series on the Intellectual Property Office website. Your own arguments and supporting documents The Examiner's view of a mark may not seem logical or reasonable - you can try to persuade them that a certain phrase, for example, is never used by other people in the same trade, or that the public could not really be expected to see the mark that the way the Examiner does. You may be able to support these arguments by sending the Examiner evidence such as advertisements by people in the same trade, a website search or details of a dictionary definition. However, do bear in mind that the Trade Marks Registry is not obliged to accept this sort of informal documentation.

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Precedent - similar marks Your client may have filed a similar mark in the past which has been accepted - or you may find examples of similar marks in the Trade Marks Journal which have been accepted - but beware of using as precedents marks which were only accepted on evidence of use. There may be special circumstances relating to these which prevent them from being a useful analogy to and precedent for your client's mark. If you are arguing that a mark is acceptable prima facie, it is not going to help your case if the precedents you send to the Registry are marks which were accepted on evidence of use! (Note also that in the MADAME case [1966] RPC 541 it was held that each case must be decided on its own merits.) Generally, precedent will not help you that much. Already registered You could explain that the mark is already registered at the Community Trade Mark Office, or in another jurisdiction – this is not binding on the Trade Marks Registry, but can be persuasive. In particular, while both the UK and OHIM base their practice on the Directive, practice does differ between the two. Some marks that are refused on absolute grounds by the UK office go smoothly through OHIM – and vice versa.

Please read Chapter 3, part 5 of the Trade Marks Registry Work Manual. This explains that the Trade Marks Registry may take into account the fact that the identical mark has been registered in another Member State for the identical goods or services.

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Trade evidence You may be able to file evidence showing that the mark is already recognised by others in the same trade as denoting your client’s products, or to the effect that the word is not used, or not wanted generally, in the trade.

Evidence of distinctiveness You may be able to demonstrate that, although your client's mark is not registrable prima facie (on its own merits), your client has actually used the mark for so long, and on a sufficiently wide scale, that it has become factually distinctive of your client’s goods or services. A large number of people now recognize it as your client’s mark. We look at this sort of evidence in the Silver Module.

However, this is an important subject, so please take time now to read Chapter 3, section 45 of the Trade Marks Registry’s Work Manual.

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Prior rights

If your client has the same (or almost identical) mark already registered for the same or similar goods or services, this can be very persuasive. The mark may proceed on the basis of “prior rights”.

Please read Chapter 3, section 47 of the Work Manual.

Restricting the specification Where an objection is raised against only some goods or services, one way of overcoming it is by deleting those goods and services. You will need to ensure that this is acceptable to the applicant.

Please read section 48 of chapter 3 of the . Remember that in some cases, if there is an objection that the mark is deceptive, as well as descriptive, amending the specification is unlikely to help, and may make things worse. The Registry quotes the example of the word BEARS for toys – it is open to objection as being descriptive of toys in the shape of bears, and open to objection as being deceptive if used for toys that are not in the shape of bears.

How would you overcome objections that a mark is deceptive? Read on.

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Deceptiveness In the Khaki Module, we explained that a mark cannot be considered distinctive if it is deceptive. A deceptive mark is one that misleads the purchaser as to the character or quality of the goods or services for which the mark is used.

Sections 36 and 37 of Chapter 3 of the Work Manual deal with how the Trade Marks Registry handles deceptiveness objections. Please read them now. Please note in particular the examples the Trade Marks Registry gives of marks which do not now attract a deceptiveness objection, but would have done in the past. A deceptiveness objection can often be overcome by limiting the goods and services to those for which the mark is deceptive. Note also that the Registry invites you to file any available evidence that a mark is not deceptive (if that is available) as a way of overcoming the objection.

Overcoming objections under Section 3(2) Section 3(2) deals with “shapes/representations of shapes”.

Look at section 3(2) of the Trade Marks Act 1994. These objections are relatively rare. You need to file evidence of distinctiveness or trade evidence to overcome them.

Now please look again at section 18 of Chapter 3 of the Work Manual.

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Overcoming objections under section 3(3)(a) Section 3(3)(a) refers to “marks contrary to public policy or morality”.

Please look at section 3(3)(a) of the Trade Marks Act 1994. Public morality objections are very rare.

Please read the Work Manual, chapter 3, section 39. Note that, “If a mark is merely distasteful, an objection under section 3(3)(a) is unlikely to be justified, whereas if it would cause outrage or would be likely significantly to undermine religious, family or social values, then an objection will be appropriate.” Note also that, “The outrage must be amongst an identifiable section of the public. A higher degree of outrage amongst a small section of the public will be sufficient to raise an objection, just as a lesser degree of outrage amongst a larger section of the public will also suffice.”

If you are faced with such an objection, you might consider conducting a survey of public opinion.

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Overcoming objections on relative grounds As we saw in the Ultramarine Module, the UK Trade Marks Registry currently also carries out searches of earlier trade mark applications and registrations to check that applications do not conflict with earlier rights.

Read Sections 5, 6 and 7 of the Trade Marks Act 1994 now, to remind yourself of its provisions.

Then read part 56 “Overcoming Section 5 objection - a summary” of the Trade Marks Registry Work Manual Chapter 3. You should remember that the Registry is bound by several important decisions of the ECJ - in particular Sabel v Puma C-251/95 [1998] RPC 199 Canon v Pathé C-39/97 [1999] RPC 118 Case C-342/97, Lloyd Schufabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819.

Write down as many ways as you can think of to try to overcome objections based on earlier trade mark registrations or applications. Then compare your ideas with ours.

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We thought of the following possibilities.

Arguing that the marks are different - they may look and sound sufficiently different from each other, or have noticeably different meanings from each other for example Arguing that the goods or services are different Referring to case law, perhaps to support arguments under the first two points Referring to precedents - for example, you could carry out searches of similar marks which already co-exist on the Register. Note, however, that the Trade Marks Registry is not bound to accept earlier precedents, and frequently doesn’t Filing evidence of honest concurrent use (we discuss this later on.) Referring to the particular circumstances of the trade - for example, it might be common practice for goods to have similar names in a limited field. Removing from the specification of the application the goods or services which overlap Seeking the consent of the owner of the earlier trade mark Having the conflicting goods or services removed from the specification of the earlier mark If the cited mark is near to the date when it will expire, requesting that the application be suspended until such time as the conflicting registration is no longer in force Dividing the mark by goods/services, or if a series, by the marks in the series Acquiring the prior mark Cancelling the prior mark

Well done if you thought of most of these.

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Let's look at some of these in slightly more detail

Consent If you obtain consent from the proprietor of the cited mark, the Registry has no discretion to refuse the application – see section 5(5) of the Trade Marks Act 1994 (as amended). Companies will sometimes give consent with no problems. Sometimes, however, they will require undertakings in return from your client - for example, that your client will not seek to expand the range of goods or services on which the mark is used. They may also ask for payment. It is normal to offer to meet the proprietor's reasonable costs incurred in providing consent and your client may be happy to pay a reasonable consideration as well. However, some proprietors may ask for excessively high amounts of money. Under the Trade Marks Act 1938, the Registry could take into account circumstances where unreasonably large sums were requested, and sometimes withdrew the citation. However, practice has changed, and the Registrar now has no discretion to take this into account.

Look at paragraph 56.2 of Chapter 3 of the Work Manual. This deals in detail with the question of consent.

Preparing a letter of consent We’ll think about basic letters of consent.

Please read paras 104-166 to 104-169 of the Trade Mark Handbook.

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Then read section 5(5) of the Trade Marks Act 1994.

Now think about what you have just read. What are the minimum requirements for consent under section 5(5) of the Act? Write your list down, and then check it against ours.

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A letter of consent must: Make clear the mark and the goods/services in respect of which consent is being given, for example, by giving the application number of the application for which consent is being given. Make it clear that registration – not merely use – is being consented to. Include the name, position and company (if any) of the person who is actually signing the letter. Give the number of the relevant mark owned by the person giving consent. Be in English, or accompanied by a certified translation. A letter of consent should Be on headed paper if possible There is an example of a letter of consent on the Intellectual Property Office website. If you need to, you may file a certified copy of a letter of consent. The certification may be by a registered trade mark agent.

Honest concurrent use Section 57 of chapter 3 of the Work Manual tells you about honest concurrent use from the point of view of the Trade Marks Registry. Re-read it now if you wish. (We look at the presentation of evidence of use generally in the Silver Module.) You should note that there are very serious drawbacks to relying on the residual honest concurrent use provisions of the 1994 Act – and note that there are no provisions for honest concurrent use in the Directive. If both the marks and the goods or services are identical, or virtually so, the application will be refused – section 5(1) of the Trade Marks Act 1994 prohibits registration in these circumstances. Your client may be able to amend the application to avoid refusal on these grounds – but if not, the application will be refused.

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Division This can sometimes be a means of dealing with objections on both absolute and relative grounds.

You can divide the application by

Mark if you have filed for a series of marks, you can divide out the series so that the form of the mark to which objections have been raised can be argued, while those to which there are no objections can proceed to registration.

Goods/services if objections relate to only some of the goods or services, you can apply to divide the application so that it can proceed in respect of some of the goods or services while the others are still under discussion In each case, a new application is created, so as well as the fee for dividing the application, you will have to pay new application fees. The advantage is that the new application will retain the original filing date. You will need to confirm with your clients whether they prefer to pay the extra fees and keep the early date, or whether it is better from their point of view to save costs.

(Note that division does not overcome objections totally, it merely enables undisputed elements of an application to proceed. You will still need to try to overcome objections if your client wishes to proceed with those elements of the application to which the Examiner has objected.)

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The Rules relating to amendments and divisions

Now read the Trade Marks Rules 2000 relating to applications, amendments, division and mergers. Then answer the following questions.

On which form would you file a request to amend the details of the owner’s address on an application?

Which form should you use to file a request to divide an application?

Your client applied to register a cartoon character as a trade mark in respect of goods in classes 16, 25 and 28, and shortly afterwards applied to record a high street department store as a licensee. While problems with objections relating to the Class 16 application are being sorted out, you have recommended that you apply to divide the application into two, so that the mark can go ahead in classes 25 and 28. Will this make any difference to the licence?

When registrations are merged, what will be the relevant date of registration?

Our answers are on the next page.

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Check your answers. 1.

You would use form TM21 to file a request to amend an application - Rule 17.

You would use form TM12 to request division - Rule 19.

Under Rule 19(3), an already recorded licence will apply to all the applications into which the original application has been divided – but of course, this can be altered by agreement between the parties to the licence. (We talk about licences in another Module.)

In the case of merged registrations, the merged registration will have the date of the latest of the registrations.

Extensions of time The Trade Marks Registry imposes deadlines for replying to examination reports. You may request extensions of time for replying, but must give good reasons for the request. Note that the fact that you are awaiting instructions from your client is not considered a good enough reason for the Registry to grant an extension of time.

You make the request on form TM9. Note that this is the same form that you file when requesting an extension on a contested matter, such as an opposition – but you do not have to pay fees when requesting an extension on a straightforward pending case (unless a Hearing has taken place).

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Hearings It can sometimes be most helpful to talk over the objections, and your responses to them, at a Hearing, with a Hearing Officer. He or she will be a senior officer at the Trade Marks Registry. Hearings will be arranged for a mutually convenient time and may be held In London In Newport By telephone or video conference

You can show the Officer any additional information that you have, and any evidence. The Officer may ask that you then submit the evidence in the form of a Witness Statement or Statutory Declaration. Any evidence submitted to the Trade Marks Registry will be available to the public, unless you request confidentiality (with reasons) at the Hearing, and the Hearing Officer allows the request. You must explain this to your client.

A Hearing should take no more than thirty minutes per case. If you have asked for Hearings on more than one application, they are likely to be dealt with in the same session. In fact, the Registry’s formula is 7-10 minutes per application for a Hearing of a batch of cases, plus an extra ten minutes for the batch.

What might happen?

What might be the outcome of a Hearing? Write down any ideas that you have. Then take a look at the next page.

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The Hearing Officer will make a decision at the Hearing, and may Accept your arguments and allow the application to proceed. It will then go on to be published in The Trade Marks Journal. Accept your arguments, subject to minor amendments of the application – for example, limitation of the goods or services. If this can be agreed at the Hearing, the application will then go on to be published in the Trade Marks Journal. (You may need to obtain your client’s prior authorisation to make these amendments.) Reject some or all of your arguments, but allow you time to overcome the remaining objections. If this is the case, you may deal with whatever the matter is within the time allowed. You may request extensions of time, by using form TM9, with a fee (£50 at the time of writing). Refuse the application. The Hearing Officer will confirm this after the Hearing with a letter conveying the decision. You will need to advise your client of this and advise whether you think the matter is worth pursuing. Your client may wish to appeal, in which case, you should request a written “Statement of grounds of decision”, using form TM5 and paying the fee (£100 at the time of writing). You must do this within one month of the date when the Officer sent the decision. He or she will occasionally change the rejection to allowance, sometimes with conditions, as a result of the TM5; but more usually will confirm the decision in writing, normally within a month or so. Shortly after the Hearing, the Hearing Officer will send you a brief minute of the Hearing. More information and formalities The current practice with regard to hearings is set out on the Intellectual Property Office website at www.ipo.gov.uk/tm/indetail/hearings.htm.

Please read this carefully, making notes of anything you want to refer to later.

JADE Practical points to bear in mind When preparing for a Hearing, you should Find out where the Hearing is to be held Arrive early Bring your files along with any law reports you wish to rely on, making sure by a preliminary telephone call that the Hearing Officer also has them. Skeleton arguments It is customary – although not essential – to prepare “skeleton arguments” before the Hearing, listing the points and arguments on which you intend to rely. This focuses your mind. It is also customary to send the skeleton arguments in advance to the Hearing Officer. Sometimes, you will then receive a phone call saying, “I have read your skeleton, and agree with it – so don’t bother turning up!”. (Skeleton arguments are required in contested matters such as oppositions.) Important – you must be fully aware of all the circumstances surrounding use of your client’s use and adoption of the mark. You must know the case intimately, and must prepare in detail for each one of the objections. If you are relying on use of the trade mark you must provide Date of first use The precise goods or services on which the mark has been used The turnover in respect of each category of goods or services Samples of, for example, packaging, showing the actual use of the mark An outline of the advertising expenditure A selection of, for example, magazines or journals where the advertisements have appeared. In practice, you will find that taking samples of the products, packaging and advertisements to Hearings to show to the Hearing Officer will normally be very helpful, even when you are not relying on use. The Officer may not otherwise be able to visualise the goods, or understand what they are. A collaborative approach is almost always the best way forward – “What are we going to do with this mark?”. You should also have thought through the likely outcomes and discussed them with your client. You will need to obtain your client’s prior approval as to what limitations to the goods/services might be acceptable.

JADE Important – the onus is on you to prove your case. Onus on the Registrar The onus on the Registrar is to be neutral in assessing whether registration should be granted. However, if objections are raised to an application, the onus then shifts to the applicant or his agent to remove the reasons to the Registrar’s objection.

Publication When your client's application has been allocated a place in The Trade Marks Journal, the Trade Marks Registry will notify you of the date of publication in writing. Marks which have been accepted are published for opposition purposes. A period of three months is allowed for anyone who wishes to do so to enter opposition. (We look at opposition proceedings in the Black Module.) The Trade Marks Journal is published online every Wednesday (there used to be a printed publication, but this no longer exists) and the marks are shown in Class order. Multi-class applications are shown in full under the lowest class numerically, and simplified details are shown under the other Classes. A separate section, utilising the same scheme, carries the International (Madrid Protocol) cases. The Journal also carries official notices, and private advertisements as well as publication of all applications and changes relating to registered marks. Publication used to be known as “advertisement”, and you will still sometimes see references to this.

Go to www.ipo.gov.uk/tm/t-journal/t-tmj/t-tmj-guide/t-tmj-howto.htm – “How to use the electronic Trade Marks Journal” - and read it. Now look at the published Journal itself at www.ipo.gov.uk/tm/t-journal/t-tmj.htm. Spend some time looking at the contents.

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Post-publication matters

Please read part 61 of Chapter 3 of the Trade Marks Registry Work Manual now to see how the Registry deals with certain matters that may arise after an application has been published. We look at “post-publication observations” in the Black Module – they tend to be used instead of, or in addition to, opposition proceedings.

Applications accepted in error The text you have just read also deals with what happens when the Trade Marks Registry mistakenly accepts an application. The applicant may be offered a Hearing. The applicant may be allowed time to amend the specification of goods or services. The applicant may be invited to submit evidence.

Next, we'll look at registration.

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Registration

If you have overcome all objections, complied with all formalities, the mark has been published and there have been no oppositions (or any have been settled), your client's application will proceed to registration.

You do not need to take any action at this stage - the Registry will assume that having proceeded this far, the applicant wishes to continue with the application.

Some four to six weeks after the end of the opposition period, therefore, you should receive a Certificate of Registration. This will show the proprietor’s name, the Class(es) and the specification of goods or services in respect of which the mark is registered, as well as a representation of the mark.

If you do not receive the Certificate, you should contact the Trade Marks Registry to find out what has happened - the Certificate may have got lost in the post or mis-filed. Your office should have a diary system for checking on such matters - if not, make your own diary note to chase this up if necessary.

The certificate will also show the date from which the registration is granted (the filing date). The registration is in force for ten years from that date, and at the end of that time it can be renewed, if required for a further ten years - and every ten years after that, if the renewal fees are paid. (However, your client's registration will be endangered if your client isn't using the mark - a subject we'll look at in more detail in the Pink Module.)

The Certificate will also show the date the mark was actually entered on the Register. This is different from the date of registration - and can be very important as you'll see elsewhere. In particular, as we see in the Pink Module, the five year nonuse period runs from the date the mark was actually placed on the Register.

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Renewal You need to know in outline about trade mark renewals. Most offices either have a separate department dealing with these, or sub-contract to one of the computerised renewals bureaux. Make a note to talk to your trainer about your office’s practice.

Read Sections 42 and 43 of the Trade Marks Act 1994, then Rules 27, 28, 29 and 30.

The Trade Marks Registry normally sends reminders to the most recent address on its files, about three months before renewal is due. If your office is recorded as the address for service, the reminder will come to you, and you will normally notify the client that the renewal is due shortly and of the fees involved.

Renewal fees may be paid electronically.

Most practices also have an office diary or reminder system, so that they can make sure the client is notified of the renewal date and the renewal can be dealt with in good time, even if the Registry's reminder fails to arrive in time for any reason. (Although renewals can be effected up to six months late, there are, as you have seen from reading the Rules, additional fees to pay.)

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You have almost reached the end of this Module. Don't forget to make notes of any points you would like to discuss with your trainer afterwards.

If your office has a trade marks practice, ask about the reminder systems it uses to make sure that due dates are properly recorded, and, generally, that matters don't get overlooked.

Now move on the quiz.

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Test Yourself

What acknowledgement of an application should you receive from the Trade Marks Registry?

If you have attempted to overcome objections to an application by correspondence, and have not succeeded, what can you do next?

What period is allowed after publication for oppositions to be filed?

Into how many sections is the “front part” of the Trade Marks Journal split, and what do they cover?

The best way to advance an application you have filed for a series of marks is to divide the application by the marks in the series. What information should you give your client about this?

What happens if the Trade Marks Registry objects that the mark that you have applied for does not comply with section 32(2)(d)?

Check your answers.

JADE

The answers.

A filing receipt.

You can apply for a Hearing.

Three months.

Two parts Cases accepted under the UK Trade Marks Act 1994 International Registrations designating the UK.

It is more expensive to divide an application by series than to file a new application. However, if the client opts for division, the new application will have the same application date as the original application, and will consequently take precedence over applications filed since then.

If the mark is not capable of being represented graphically, the Trade Marks Registry will not give a filing date, but will allow two months for you to remedy the deficiency. If you file an acceptable representation in time, the filing date will then be the date on which you remedied the deficiency.

SILVER

SILVER MODULE

Evidence of Distinctiveness

SILVER

Before starting this Module, you should have worked through the Khaki Module and the Orange Module. We referred to distinctiveness in these Modules – if you need to remind yourself of what we said then, please turn back to the Khaki Module, and read it through now. In this Module, we'll be looking at the circumstances when you might need to file evidence of distinctiveness – that is, evidence that the mark has in fact become distinctive of the goods or services for which you are seeking registration. We'll talk about the form in which the Trade Marks Registry expects this sort of evidence to be filed. We'll also be giving you a chance to prepare some evidence of use yourself.

To complete this Module, you will need Access to the Intellectual Property Office website The Trade Marks Act 1994 The Trade Marks Rules 2000 Chapter 3 of the Trade Marks Registry Work Manual (as amended July 2004) at www.ipo.gov.uk/tmmanual-chap3-exam.pdf The Trade Mark Handbook, Chapter 107 British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 9 WINDSURFER– (CHIEMSEE decision) joint ECJ decision C-108/97 and C-109/97)

When you have completed this Module, you will have Stated the way in which evidence of use is normally filed Listed the things you will ask a client for when preparing evidence of use Prepared a Witness Statement Drafted a questionnaire for obtaining trade evidence

This Module will take about three days to complete.

SILVER

As you've been working through this Manual, you may have seen references to filing evidence of distinctiveness, particularly in the Orange Module, where we talk about prosecuting applications, and the Khaki Module.

Start now by listing all the circumstances you can think of when you might want to file evidence of your client's use of a trade or service mark at the Trade Marks Registry. Look at your copy of the Trade Marks Act 1994 if you wish.

Then look at our list on the next page.

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Our answers

You might file evidence of distinctiveness to respond to objections raised by the Trade Marks Registry under

Section 1 – that the “sign” is not a trade mark

Section 3 - absolute grounds for refusal - for example that the mark is not capable of distinguishing the goods or services, or is deceptive

Section 5 - that the mark conflicts with a mark in which there is an earlier right - for example, to show, under the provisions of section 8, that your client has honest and concurrent use with the proprietor of an earlier mark.

or in the case of

Opposition proceedings - for example, to show that your client has earlier use of a mark Revocation proceedings.

You are likely to need to prepare similar evidence of distinctiveness in an unregistered mark if seeking to bring a passing-off action. (We discuss passing-off in the Yellow Module.)

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The Trade Marks Registry's approach

The Trade Marks Registry's approach to evidence of use of a trade mark is set out in Chapter 3 of the Work Manual.

Please read section 45. Then answer the following questions. 1.

What does the proviso to section 3(1) say?

Please list the examples of marks, which the Trade Marks Registry gives as posing particular problems, but where you may be able to argue that they have become distinctive through evidence of use.

How is the use of a mark as part of a composite trade mark to be judged?

When filing evidence of distinctiveness, will the Trade Marks Registry take the following types of use into account when deciding whether the mark has become distinctive through use? i) A bona fide intention to use the mark in the UK and actual use of the trade mark in other European Community countries ii) Use on goods sold both in the UK and exported from the UK to Scandinavia iii) Use on goods which are manufactured in the UK but which are all exported to Japan iv) Use of the mark in the Great Yarmouth area only.

For how many years should you normally show evidence of advertising expenditure?

Will the Trade Marks Registry consider use of a domain name as evidence of use?

Check your answers.

SILVER

The answers.

The proviso to section 3(1) provides that objections under Section 3(1)(b), (c) or (d) of the Act may be overcome if it can be shown that, by the date of application, the mark has in fact acquired a distinctive character as a result of the use made of it.

colours the appearance of the goods (including shapes) packaging.

Through the eyes of an average consumer.

i) No - use outside the UK does not count and there has as yet been no use in the UK ii) Yes – use on goods exported from the UK can be included iii) The Trade Marks Registry will not allow registration on this basis – except in cases where there are only very minor prima facie objections iv) Possibly, but not if the use and reputation of the mark were limited to Great Yarmouth. So you might be able to show that, because many holiday makers from across the UK visit Great Yarmouth, the mark in fact has a national reputation. But this would be a matter of evidence.

Normally, at least three years prior to the date of application, if on a substantial scale.

The Work Manual says “Use of a domain name will not assist unless the evidence shows that the relevant goods/services have been offered for sale under the domain name. Prominent use of the domain name (or at least the distinctive element(s) of it) on web pages offering goods or services for sale may constitute trade mark use, but each case should be considered on its own merits taking account of the way that the domain name has been used.”

SILVER

Now read the information on “How to provide evidence of use of a trade mark” at www.ipo.gov.uk/tm/t-applying/t-after/t-after-whathappensnext/ t-after-examreportnotes/t-after-evidenceofuse.htm.

Then answer the following questions.

Your client regards the information they have supplied to you as commercially highly sensitive, and want to keep it confidential. What do you tell them?

How should you present your evidence?

How should you head this evidence?

How should you conclude?

Must your evidence show use of the mark in exactly the same form as that for which you filed the application?

The answers are on the next page.

SILVER

The answers.

Generally, any documents he supplies will be available for public inspection if the application is published in the Trade Marks Journal. However, you can request confidentiality for specific items, by putting detailed reasons in writing, either when you file the item, or 14 days after that.

It should be presented in the form of a Witness Statement.

“TRADE MARKS ACT 1994”.

“I believe that the facts stated in this Witness Statement are true”. This should be followed by the signature of the person making the statement, and the date it is signed.

Preferably, yes. If not, then it must be substantially as applied for.

We’ll now move on to look at some of the case law guidance that we have on distinctiveness.

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Case law guidance on distinctiveness

You should have with you a copy of the TREAT decision ([1996] RPC 281). The decision includes some detailed comments on evidence of use in cases where the distinctiveness of a mark is being evidenced. Please read from page 305, line 21 through to page 306, line 48. The decision also included comments on market survey evidence. Please read page 303, line 10 through to page 305, line 19. The Trade Marks Registry will take these comments into account when considering evidence of distinctiveness, as modified by the ECJ in the WINDSURFER CHIEMSEE case.

The WINDSURFER CHIEMSEE case - Windsurfing Chiemsee (C108&109/97) [1999] ETMR 585.

You should also have a copy of this case (it is also available on the Intellectual Property Office website at www.ipo.gov.uk/tm/legal/decisions/ecj/c10897.pdf and on the ECJ website at http://curia.europa.eu). Please read it now.

SILVER

Now please go back and take note in particular of sections 9-15 (the introduction to the facts), sections 29-33 and 51-54. The most important point here is the form the evidence should take. For proceedings involving trade marks, including evidence of use, evidence should take the form of a Witness Statement, as we have already seen, or Affidavit (although oral evidence may also be admitted at the Registrar's discretion).

Section 69 of the Trade Marks Act 1994 refers to this, as do Rules 49 and 50.

Please read them now.

You will normally submit a Witness Statement where the document is signed in the UK and an Affidavit where the document is signed in another country. Please note that many countries (particularly Commonwealth countries) – including Singapore and New Zealand – refer to “Statutory Declarations”. The way in which the evidence is presented must be binding on a national of the state where the evidence has been given. If you have any queries about this, you should consult an associate in the country in question.

SILVER

The information at www.ipo.gov.uk/tm/info/evidence.htm tells you about Witness Statements as evidence of use. You should have already read it, and should have noted the suggested format for a Witness Statement to be filed at the Registry. You might like to note that the wording of a Witness Statement can vary slightly from that given in the Work Manual. It might equally well begin...

TRADE MARKS ACT 1994 IN THE MATTER OF Trade Mark Application Number......... in the name of …..…. to register the mark …… in classes ……..

WITNESS STATEMENT

I, (full name of declarant), a British subject, of (address) DO HEREBY SOLEMNLY AND SINCERELY DECLARE AS FOLLOWS I am the of (hereinafter referred to as "the Company") and I have held this position since . I confirm that I am duly authorised by the Company to make this Declaration on its behalf and the evidence contained herein comes from both my own knowledge and the records of the Company, to which I have full access. (And so on.) You will certainly see other variations in wording if you look at Witness Statements prepared by different agents. Make a note, if your office files trade mark applications, to ask your trainer to let you see any examples of Witness Statements from the office files.

SILVER

Objections raised under section 5 of the Trade Marks Act 1994

If you are filing a Witness Statement to overcome objections raised under Section 5, you will need to add a clause confirming that, to the knowledge of the person making the Declaration, there has been no confusion between the two marks and no litigation (assuming this to be the case, of course). And, ideally, your declarant should also explain briefly how the mark came to be adopted so it is clear that it was in good faith (and not copied from the cited mark).

Depending on the circumstances, you could use this sort of clause, probably just before the end of the Declaration:

To the best of my knowledge and belief, the company has used the trade mark .............. honestly and concurrently and in the presumed knowledge of the proprietor of the cited mark no................... since the date of first use as aforesaid, as evidenced hereinabove, and without any confusion with the cited mark taking place. Furthermore, the company has at no time been requested by the proprietor of the cited mark to desist from using its trade mark ....................... nor is the company experiencing litigation or trade mark infringement proceedings, nor does it envisage any, from the cited proprietor as aforesaid.

Next, you will have a chance to think about how you would go about preparing evidence of use for a client.

SILVER

Now start thinking about how you might file evidence of use for your own client. Your client is Mrs Adams, and she wants to register her trade mark PRETTY BABY in Class 25 in respect of “Baby wear; children's wear; all included in Class 25”. You have filed an application covering these goods, in the name of her company, A B Adams Limited, which has been allocated application number 2 987 654, and has a filing date of 3 March 2006. You have just received the first Examination Report, which raises an objection under section 3 that the mark is not capable of distinguishing because PRETTY BABY is descriptive and non-distinctive when used in respect of the goods in question. There are no objections under section 5. However, Mrs Adams has told you that she has been using the mark since 1995, selling by mail order from her own catalogue, and that she has all the goods manufactured to her designs and each item of clothing has the mark PRETTY BABY on its label. You advise filing evidence of this use, and your client thinks this is a very good idea.

Make a list of all the information and evidence you will ask Mrs Adams for, in order to prepare a Witness Statement.

Then look at our list overleaf. We’ve also given you, in brackets, the answers that Mrs Adams has sent.

SILVER

You have asked Mrs Adams for The full name of the person making the Witness Statement and his or her position in the company. (Annabelle Claire Adams, the Managing Director.) The length of time the position has been held. (Since 1995, when the company was formed.) The date when the mark was first used on the goods claimed. (2nd June 1995.) What is the total turnover resulting from the sales of the goods for which the mark has been used for the seven years prior to the date of the application? If possible, please could she give you an annual breakdown of the turnover Year to 31st March

1999–2000 2000-2001 2001-2002 2002-2003 2003-2004 2004-2005 2005- 2006 filed.)

710,000 720,000 850,000 1,270,000 1,350,000 1,410,000 1,430,000

(up to the date the application was

How many items of the clothing has she sold in that time, bearing the trade mark? (She can't tell you that - her records don't give that sort of information. But she knows that from January to March 2006, she sold 10,400 items of clothing. )

SILVER

Does she advertise - and if so, where? (Yes, from time to time in Babywear magazine Mother and Baby magazine Mother and Toddler magazine) Does she have a website Yes – www.prettybaby.ltd.uk Please can she send samples of copies of - advertisements - orders - invoices - letters - brochures and any other trade literature - swing tickets and labels - sample receipts - any other material she thinks would be helpful - her website showing the mark used in relation to the goods - and preferably evidencing the use of the mark as far back as possible. (She has sent you bundles of copy advertisements, invoices, orders, her publicity material, with photos of the clothes [dated between 1997 and 2006], and some sample letter headings. She has also sent copies of her Company registration certificate and her VAT registration certificate, both of which are dated 1985. Finally, she has enclosed a complete set of her catalogues over ten years and a printout of her customer mailing list.) How much does she spend on advertising - and please can she give you an annual breakdown? Year to 31st March 1999–2000 2000-2001 2001-2002 2002-2003 2003-2004 2004-2005 2005- 2006

£ 12,000 11,000 11,000 14,000 17,000 21,000 14,500 (up to the date the application was filed.)

SILVER

Which areas of the country does she sell in? (“Everywhere” - she sells to mail order customers in every county in the UK. She also has some limited exports to the Republic of Ireland, Holland and Germany. Her customer printout confirms this.) Her website, with a list of “hits”, showing the number of people who have visited her site. You may have thought of some more useful items.

Important Remember that you must warn your client that the Trade Marks Registry will regard the information she gives you as open to public inspection, unless the Registry agrees in advance that the evidence will be kept confidential.

Section 67 of the Trade Marks Act 1994 and Rules 42 and 43, of the Trade Marks Rules 2000 and Part 59 of Chapter 3 (“Confidentiality”) of the Trade Marks Registry Work Manual all deal with this. Please take some time to read them now.

SILVER

Bearing in mind the types of evidence we have just talked about, we recommend here that you make a note of the type of evidence that can usefully be filed to support your arguments that a mark has become distinctive through use in other cases. You can then refer to it in the future if and when you prepare evidence of use for clients.

In general, you will need:

The date of first use (in the UK) Samples, such as labels, goods, invoices, brochures, showing use of the mark in relation to each of the goods or services claimed; if the items are too large, you can use photos (there may be some in the brochures which you can refer to) The annual values of each of the sales of each of the categories of goods bearing the mark, or the turnover of the business for the services for which the mark is used for at least five, and preferably seven, years before the application date The amount spent annually on advertising or promoting the goods or services for which the applicant uses the mark for at least three years before the application date A customer list, or other evidence, showing the geographical extent of sales across the UK Any trade exhibitions or shows where the goods or services have been promoted - name, date and venue; photos of trade stands showing the mark are also good A good collection of sample advertising or promotional materials featuring the mark, over a range of dates, if possible.

SILVER

A Note about Evidence Mrs Adams has sent you various items, including catalogues and sample advertisements, to be included in the Witness Statement. These are normally filed as Exhibits to the Witness Statement, to be referred to at whatever point seems most appropriate. You will usually refer to them by the initials of the person making the Witness Statement and number them. Each Exhibit will have its own Exhibit sheet, which will carry the same heading as the Declaration and will say This is Exhibit (for example, ACA1) of the Witness Statement of (Annabelle Claire Adams) dated the (insert date) So, for example, you might make Mrs Adams' customer list up into an Exhibit and refer to it in the paragraph of your Witness Statement that tells the Trade Marks Registry where the company's customers are. We suggest the wording “Exhibit ACA1 (or whatever number it becomes, depending on the number of Exhibits you have already referred to), now produced and shown to me, consists of a list of the company's customers, for goods in respect of which registration is sought under number 2 987 654, on which the mark as applied for was used, showing that sales were made in all the above mentioned areas of the country.” If you are sending copy documents, you can include this sort of phrase "... Exhibit .... consists of a copy, which I confirm to be a true copy, of...."

There are some notes about Exhibits in paragraphs 45.11 and 45.12 of Chapter 6 of the Trade Marks Registry Work Manual. Read these again now if you wish, and note that the Trade Marks Registry emphasises that the evidence must show use in relation to each of the goods (not just the class of goods) for which you are claiming factual distinctiveness.

SILVER

When you have prepared the Witness Statement - and checked the final copy for typing errors - you will send it, and the Exhibits, to your client. She simply needs to sign it.

Your client should then return the Witness Statement and all the Exhibits to you for filing at the Trade Marks Registry. NB – it is often better to ask your client to come into the office to sign the Witness Statement, rather than trusting the post.

Now, using the information we’ve given you, and the information in the Trade Marks Registry Work Manual, try drawing up your own Witness Statement.

We haven’t given you a “model” answer - everyone will take a slightly different approach when preparing evidence of use. You can compare your draft with the Work Manual example.

However, on the next page we've given you a checklist of points we think you should have included, with some tips.

We also strongly recommend that you show your Witness Statement to your trainer, so that he or she can discuss with you how you've approached it and whether there are ways you could improve it.

When you've finished, look at our checklist overleaf.

SILVER

Checklist You should have remembered to include The heading The application number The mark applied for The name, address and authorisation of the person making the Witness Statement The date of first use in the UK A statement that the mark applied for has been used continuously from the date of first use to the date of the application in respect of each of the types of goods claimed (specify them) The turnover - both the overall total and the annual breakdown – broken down by types of goods The information you have about the number of items sold. It is quite permissible to include in a Witness Statement a confirmation that the company’s records are not sufficient to allow the inclusion of other or precise figures. If you ever include an estimate, make sure that you state that the figures are estimated by the declarant. You can use the phrase “to the best of my belief and recollection…”. The details about advertising - including where the company has advertised and how much it has spent. The areas where the goods supplied under the mark applied for have been sold (you can list areas such as “Scotland” or “the South West of England” - and add names of large towns or cities where the goods have been sold if you have them). It may also help your client’s case to mention the exports.

SILVER

The Exhibits - if at all possible, use everything Mrs Adams has sent you. There was no need to make up Exhibit sheets, as we didn't give you the Exhibits, but you should have referred to them in the text. The concluding paragraph or “Statement of Truth” at the end. This gives the document legal effect Space for your client’s signature

How did you get on? You probably included most of the points - but if you are not happy with your first attempt, don't be afraid to take some time now to have another go.

We’ll now move on to consider how to assemble trade evidence - that is, evidence from people who purchase the goods.

SILVER

Trade evidence

V What are the circumstances in which you might need to produce trade evidence?

Normally, you might do this when the Trade Marks Registry has objected under section 1 or 3(1)(b) of the Trade Marks Act 1994. As an example, imagine the colours blue and white, applied to the clamp and drain respectively, of a roof drainage outlet. The outside part is blue; the inside is white. Your client tells you that manufacturers in his industry do conventionally use colour combinations to distinguish their products from those of rivals. Part of the reason is that, in use, a drainage outlet of this type could be in an inaccessible or difficult location. So it is important to be able to see, from the colour combination, who made it – for example, when it needs replacing. Your client has been using this particular combination since 1967 and is the UK market leader. You have attended a Hearing, and the Trade Marks Registry has advised you that it wishes to see evidence that the colour combination is seen as a trade mark by members of the relevant public. First, who are the relevant public? Clearly, they are not the average DIY weekend enthusiast – these are specialist products and most unlikely to be bought by this type of person - nor would such a person know what to do with the goods. So your first thought is to evidence the class of people who buy these products. Your next problem is that projects of the type where the goods are used (buildings such as flats and multi-storey car parks) are built to very high specifications – not just run up by builders. In consultation with your clients, you decide that architects are a good class of person to ask. You could also ask relevant trade associations, and editors of relevant journals.

SILVER

Think now about the questions you need to ask.

Remember that they must not be leading questions – that is, questions that invite a specific answer, or lead the witness in areas of consideration, enquiry or speculation where he or she would not normally go.

Now draft a questionnaire to the architects from whom you are seeking evidence. Write down the questions you will ask them. You can imagine that you are referring to attached colour pictures of the goods, if you wish.

Now compare your letter with ours.

SILVER

QUESTIONNAIRE DRAINAGE OUTLETS We are advisers to a manufacturer of drainage outlets. We are seeking advice from you as a person experienced in this field. This information is to be filed at the UK Trade Marks Registry. We are obliged by the Trade Marks Registry to adopt a format which does not lead you as the respondent in any way. May we ask you kindly to assist us if possible by completing the questions below and returning the letter in the prepaid envelope provided. We are grateful in advance for your assistance. 1.

Please state your full name (including any middle names) and the number of years you have served your organisation FULL NAME _______________________________________________________________ ORGANISATION _______________________________________________________________ NUMBER OF YEARS’ SERVICE _______________________________________________________________ TOTAL NUMBER OF YEARS’ RELEVANT EXPERIENCE _______________________________________________________________

Are you familiar with types of drainage outlets? YES/NO (please delete whichever is not appropriate). If you answered “Yes” to the above question, please kindly complete the rest of this questionnaire. If you answered “No”, please return the questionnaire to us now.

Looking at the attached picture, do you associate the colours shown with the goods of any particular company or manufacturer? YES/NO (please delete whichever is not appropriate).

SILVER

If you answered “Yes” to the above question, please state which company or manufacturer _______________________________________________________________

In your experience, is there any reason for such drainage outlets to be manufactured in different colours? YES/NO (please delete whichever is not appropriate).

If you answered “Yes” to the above question, please state the reason. _______________________________________________________________ _______________________________________________________________ _______________________________________________________________ _______________________________________________________________ _______________________________________________________________

If we provided a suitable document, would you be prepared to sign a Witness Statement if necessary, simply to confirm the information you have just given? YES/NO (please delete whichever is not appropriate).

Your signature

Today’s date

Thank you for your assistance.

(Note that we have tried to make it as simple as possible for the person to reply – in our experience, you are much more likely to get a response if you make it straightforward, and not too time-consuming, for the person to complete the questionnaire. It is courteous to include an SAE for them to return it to you.)

SILVER

What comes next? Once you have received and assembled your replies (and you may need to chase them up), you need to do two things. Firstly, you need to draft a Witness Statement in your own name, as you are the responsible agent, setting out exactly how you went about acquiring your trade evidence. It is essential that you exhibit all the replies you receive, not just the ones that give the answers you were hoping for, and that you comment on the percentage of responses obtained compared with the number of questionnaires sent out. This is so that the Trade Marks Registry can assess the value of the evidence. (If the replies are really not in your client’s favour, you would do better to advise your client of this, and ask whether they wish, under the circumstance to continue with a potentially expensive course of action that is not now likely to result in a registration.) Next, you need to go back to those respondents who gave helpful answers, and who confirmed that they would be happy to sign Witness Statements. You should send them simple Witness Statements, confirming the facts that they have already given, for signature. Again, you are more likely to have them returned if you enclose an SAE. If you would like to discuss the form such Witness Statements should state, make a note to discuss this with your trainer.

You have almost reached the end of this Module. Take some time now, if you wish to re-read any of the materials to refresh your memory. Now make a note of any points you would like to discuss with your trainer. Then move on to the quiz.

SILVER

Test Yourself

In what forms must you normally present evidence to the Trade Marks Registry?

When you have prepared a Witness Statement and Exhibits, what should your client do with them?

What must be included in the declaration when trade evidence is being filed?

Your client has sent you details of their turnover, and the number of sales made, in the neurosurgery-related software in respect of which they are seeking to register their trade mark. The turnover seems to you to be very low. Your client has explained that they operate in a highly specialised field, and that, in fact, almost all neurosurgery departments in the UK use their software - it is because of the relatively low number of neurosurgery departments that the turnover and sales quantities appear low. Will the low figures count against their application at the Registry?

What is the test for acquired distinctiveness, as set down by the ECJ in Windsurfing Chiemsee (C108&109/97) [1999] ETMR 585?

Now see if you got these correct.

SILVER

The answers.

As a Witness Statement or an affidavit.

Your client should sign the document, then return them to you for filing.

The declaration must include the status of the person making the declaration in the industry and any relationship to the applicant the goods/services that the person making the declaration associates with the mark how long, prior to the date of the application, the person making the declaration has known of the mark a statement that the mark is recognised in the trade as associated with one particular company or manufacturer.

Probably not. If they are selling to all, or almost all, potential customers, then you should ensure that this is mentioned in the Witness Statement. The Trade Marks Registry should take into account the fact that the market is very small. In this sort of situation, you should give in evidence an indication of the percentage of market share in the specialised business, which the applicant has.

“If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied.”

BLACK

BLACK MODULE

Filing, Prosecuting and Defending Oppositions

BLACK In this Module, we will talk about what happens when someone wishes to oppose the registration of a trade mark, or file observations against its registrability. You should have already worked through the Ultramarine and Orange Modules before tackling this Module.

To complete this Module, you will need Access to the Intellectual Property Office website The Trade Marks Act 1994 The Trade Marks Rules 2000 and 2004 Chapter 7 of the Trade Marks Registry Work Manual at www.ipo.gov.uk/tm/tmmanual-chap7-law.pdf DEMON ALE Trade Mark [2000] RPC 345 WILD CHILD Trade Mark [1998] RPC 455 Forms TM7, TM8, TM9c, TM9t, TM9, TM53 and TM 54 The Trade Mark Handbook, chapter 108 Intellectual Property Office publication Opposing a trade mark at www.ipo.gov.uk/oppoaiti.pdf When you have completed this Module, you will have Listed what must be filed at the Trade Marks Registry to commence an opposition Stated who may oppose a UK trade mark application Identified the period of time following publication of a mark within which oppositions may be filed Prepared a Form TM7 (Notice of Opposition and Statement of Case) Prepared a Form TM8 (Notice of Defence and Counterstatement)

This Module will take about four days to complete.

BLACK

In the Orange Module, we saw how, once all official objections have been overcome, applications are published for opposition purposes in the Trade Marks Journal. In this Module, we discuss what happens when someone opposes the registration of an application, and what to do about it. We also discuss the types of evidence needed to support each of the main grounds of opposition you are likely to use (if you are acting for the opponent), and ways of challenging such evidence if you are acting for the applicant.

Section 38 of the Trade Marks Act 1994

Please now read section 38 of the Trade Marks Act 1994. Then please try to answer the questions below, from memory. 1.

Who may oppose an application?

What must be contained in the notice of opposition?

The answers are on the next page.

BLACK

Did you get these right? 1.

At the time of writing, any person may oppose. However, this may change in the future. Please make a note to discuss this with your trainer. (This is different from the situation at the Community Trade Marks Office, where only the proprietor of an “earlier right” may oppose.)

Section 38(2) says that the notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition (now known as a “Statement of Case”). (An oral or verbal) opposition is not possible – you can’t phone the Registry and say you are opposing!)

We look at what is meant by “the prescribed manner” shortly. We will also look in detail at how to prepare a Statement of Case.

You may have noticed in section 38(3) a reference to “Observations”. We look at these later in this Module.

The Trade Marks Registry’s view

Please go to the Intellectual Property Office website, to look at its online booklet “Opposing a trade mark” at www.ipo.gov.uk/tm/info/oppoaiti.pdf. If you find it helpful, print it out.

BLACK

Now try to answer these questions.

What period is allowed for oppositions to be filed?

What does the Trade Marks Registry give as the most common reasons for opposing an application?

The Trade Marks Registry lists three possible outcomes to an opposition. What are they?

Should you do anything before you start to file an opposition?

What must you file to start an opposition process?

What information must you include in your form TM7?

What happens when the Trade Marks Registry has accepted the form TM7?

What should the applicant do then?

What fee is payable for filing Form TM8?

10.

What form do you use when applying for a cooling off period?

11.

What is a preliminary indication?

12.

What happens if you do not agree with the preliminary indication?

13.

When must the opponent file their first evidence?

Now take a look at the answers

BLACK

The answers. 1.

Three months after the mark has been advertised in the Trade Marks Journal.

Someone believes that The trade mark is one which is not unique to the applicant and should be free for everyone in that line of trade to use They own a trade mark (which does not have to be registered itself) which is the same as, or similar to, the applicant’s trade mark.

The opposition fails and the Trade Marks Registry registers the mark The opposition succeeds and the Trade Marks Registry does not register the mark The opposition partly succeeds and the Trade Marks Registry registers the mark in respect of those goods or services for which the opposition was not successful.

Yes – you should contact the applicant, preferably in writing, to tell them why you wish to oppose their application. The Trade Marks Registry prefers it when people can settle matters without formal opposition proceedings. If you don’t do this, you may have to help pay the applicant’s costs in defending the opposition.

A ‘Notice of opposition and statement of grounds’ (Form TM7) The fee.

What trade mark you are opposing Who is applying for it Who the opponent is Who the agent is (that is, your own office details) Why you are opposing the registration If you are opposing it because of someone’s rights in any earlier trade marks (see below), you will have to give full details of those trade marks and, if they are registered marks that have been registered for more than five years, what use is being made of them.

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The Trade Marks Registry notifies the applicant.

If they still want the mark to be registered, they must file form TM 8 ‘Notice of defence and counter-statement’, within three months of the notification date.

There is no fee.

10.

Form TM9c.

11.

The Trade Marks Registry’s first opinion on the likelihood of confusion of the marks, where the grounds of opposition are based on Section 5(1) or 5(2) of the Trade Marks Act 1994.

12.

The opposition continues, but you must remember to file Form TM53. Both sides must agree to the preliminary indication for it to stop the opposition.

13.

Within three months of the Trade Marks Registry sending them either the form TM8 from the applicant or the form TM53 from either side.

If you found these questions difficult, please spend time reading the leaflet again.

You have just had a preliminary look at many aspects of oppositions. We will be looking at most of these in more detail in this module.

We deal here with the main types of opposition you are likely to encounter, which are oppositions to applications published before registration.

Now move on to learn more about opposition proceedings.

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Rule 13

Now read the Practice Directions titled “Opposition proceedings under the Trade Marks Act 1994”. Rule 13 (1) governs the filing of opposition to applications published before registration.

Read the whole of Rule 13 now. You will see that it sets out as requirements many of the matters covered in the Trade Marks Registry leaflet you have been looking at earlier.

We look at aspects of this Rule, from the applicant’s point of view, later.

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Third Party Observations

Please read section 38 (3) of the Trade Marks Act 1994. You should also have a copy of the Trade Marks Rules 2000 with you, so please then read Rule 15.

Making observations is not an alternative to the expensive and long-drawn out procedure of filing opposition. If, for example, someone thinks that an application is for a term which is common in a particular trade, they might file an observation. But observations have very limited efficacy in establishing who has the earlier right. The Trade Marks Registry will not allow someone to file observations to “bypass” the formal opposition process.

The deadline is also slightly more flexible than that for filing oppositions – you may file at any time between the publication of the mark and its registration.

Observations do have the attention of the Trade Marks Registry, which will consider whatever you have sent, provided that it is new material, and will draw it to the applicant’s attention.

However, an observation does not give the person who files it any rights in the application process.

Observations are, in practice, rare.

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The Intellectual Property Office’s Role as a Tribunal Remembering what you read in the Red Module, you should have realised that the Intellectual Property Office acts as a Tribunal in opposition proceedings. That is to say, the Trade Marks Registry has authority to hear proceedings involving more than one party (“with notice” - formerly inter partes proceedings) and issue a decision in such matters which are binding on the parties, unless they choose to appeal the decision to a higher tribunal.

Please go to www.ipo.gov.uk/tm/tmmanual-chap7-law.pdf (Chapter 7 of the Trade Marks Registry Work Manual, and read the section 2.1 “The roles of the Registrar and the Registry”.

Then answer the following question. In its role as a tribunal, what is the overriding objective of the Intellectual Property Office?

Compare your answer with ours.

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Its role is dealing with cases justly, as set out in R.1.1 of the Civil Procedure Rules 1998, including as far as practical Ensuring that the parties are on an equal footing Saving expense Dealing with the matter in a way that is proportionate to the Amount of money involved Complexity of the issues The parties’ finances Ensuring that matters are dealt with quickly and fairly Allotting an appropriate share of the court’s resources.

What happens in practice

We have seen detailed law and directions. We now look at what happens in practice. For convenience, we will first look at things in the order that they take place chronologically. At this stage, you need to be aware that much that one party does is reactive to the other. We talk about the “opponent” – the person who opposes an application. We also talk about the “applicant” – here, the applicant is the person who has applied to register a mark that will be opposed.

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The publication of the mark that will be opposed

Your client, Mr Robert King, owns a registration of the trade mark KINGFISHER for “Stationery; artists' materials; paint brushes” under number 2 246 246, dating from 10 April 1998.

In this week's Trade Marks Journal, you spot a class 16 advertisement for the mark FISHER KING, covering “Stationery and adhesives”, under number 2 999 753, in the name of Carl Sean Fisher.

Make a note of the first thing you should do when you have seen this advertisement.

Then read on to see what we think is the first thing that should be done when you spot a mark which is too close to one that belongs to one of your clients.

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First Steps

The very first thing you should do is check the status of your client’s registration on the UK Intellectual Property Office database. Before doing anything further, you must check your client’s registration is in force. (You should also check that your firm still acts for Mr Robert King!)

The next thing you should do is Tell your client.

Initial advice to the potential opponent

Your client will find it helpful if you Send your client a copy of the advertisement Explain why you think it is too close to his registration Advise him that it is possible to oppose the advertised mark Advise him as to what the time limit is for filing opposition against the mark FISHER KING. Advise him of the likely costs and warn him that if the opposition is unsuccessful he might be ordered to pay part of the applicant’s costs

Mr Fisher may require your client to prove the use of his earlier mark, and we will talk about this shortly.

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So if your client’s registration is more than five year’s old, you must also ask him: Whether the trade mark is being used – either by him or by a licensee What (precise) goods are being sold under his mark The approximate annual turnover for each of these goods The extent of the national use of the mark An idea of the level of advertising expenditure promoting the mark for the goods

If the mark is more than ten years old or abandoned through non-renewal, you also need to check if the client owns a Community Trade Mark claiming “seniority” from an older UK registration. We talk more about seniority in the Community Trade Mark Training Manual. You will also need the information listed above to draft your Statement of Case. Your letter will ask your client what he wants to do - does he wish to oppose this application? You must also stress the deadline, if Mr King decides to oppose.

Pre-action letter to the applicant or its agent

Your client may say “yes” straight away. If so, your next step is to write to the applicant, or his agent, outlining your client's objections, and asking them to withdraw the mark. You can then also, if your client so wishes, make an offer of a negotiated settlement. We discuss this later.

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However, the applicant may well decide not to withdraw the FISHER KING application. And even if you are able to negotiate a settlement, you may not be able to do so in the time allowed before you must commence formal opposition procedures. Remember that you can – and normally will – continue to negotiate while the opposition is proceeding. We talk about negotiated settlements and types of settlement agreement later in this module.

The filing of opposition on Form TM7 (the Statement of Grounds)

In a moment we will explain about what happens in the instances when matters are not resolved by negotiation. But note that filing form TM7 does not commit your client to going all the way to a full opposition Hearing. The matter may be resolved by agreement between both parties at any stage. You have written, on behalf of Mr King, to Mr Fisher's agents, inviting Mr Fisher to withdraw the application. He has not done so, and the period of time allowed for the opposition is about to expire. Mr King now believes there is a distinct likelihood that the FISHER KING mark has been used in respect of drawing paper, which he also makes - and he wants this use stopped. He instructs you to oppose the application. You, as agent for Mr King, are now engaged in a formal opposition to Mr Fisher's mark. You already know that the opponent - or an agent acting on behalf of the opponent files Notice of Opposition and Statement of Grounds on which they are opposing on Form TM7 within the term set for filing the opposition, which is three months from the date of publication.

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Go to www.ipo.gov.uk/tm/forms/tm7.pdf to find a copy of form TM7. Print it out if possible, as it will be helpful to have it in front of you.

We look first at how to fill in the Form TM7. You will see that it is a long and complex form. You must remember to complete in parts 1-3 The number of the mark you are opposing The full name of the applicant The name of the opponent and his address. Part 4 requires you to complete your firm’s details as agent for the opponent. This will ensure that correspondence comes to you! Part 5 requires you to insert details of any related proceedings currently with the Registry or the courts. (This is to ensure that all decisions in related cases are compatible with one another.) Part 6 is very important. It asks you to state under what sections of the Trade Marks Act you are opposing the application. We look at this in more detail now.

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When you prepare the Form TM7, you must put in all the grounds of opposition on which the opponent intends to rely. However, these must not be “prolix” (excessively lengthy) or unsupported by fact. We look at what this means in detail in a minute. The main ground will in most cases probably be that the mark is deceptively or confusingly similar to one owned by your client.

Please read section 5 of the Trade Marks Act 1994 now.

To summarise A trade mark shall not be registered if It is identical with an earlier mark and the goods or services are identical It is identical with an earlier mark and the goods or services are similar – and there is a likelihood of confusion It is similar to an earlier mark and the goods or services are identical or similar – and there is a likelihood of confusion It is identical with or similar to an earlier mark which has a reputation, and although the goods or services are not similar, the later mark would take unfair advantage of the earlier mark’s reputation, or would damage it Registration should be prevented by another law protecting unregistered marks Registration is prevented by another right, including copyright, design right or a registered design.

The question of other parties’ rights in a trade mark are decided by reference to the relative grounds of refusal. Claims of this nature must therefore be made under Section 5 of the Act.

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Other grounds You can also ask for refusal of the application on grounds based on other sections of the Trade Marks Act 1994, including sections

3(1)(a) – that the mark is not a trade mark at all 3(1)(b) - that the mark is not sufficiently distinctive to merit registration (“devoid of distinctive character”) 3(1)(c) – that the mark consists exclusively of one of the categories listed in this section of the Act 3(1)(d) – that the mark consists exclusively of a sign or indication which has become customary in the language or the trade 3(2) (a), (b) or (c) – that the mark is objectionable as a shape for various reasons set out in this section of the Act 3(3)(a) - the mark is contrary to morality 3(3)(b) – the mark is of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service) 3(4) - use of the mark is contrary to UK or Community law 3(5) – the mark is a specially protected emblem 3(6) - the application was made in bad faith - for example, the applicant has been the opponent’s representative in the UK

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But as we see below, any grounds raised under section 3 should be used with great caution. These sections relate to absolute grounds of refusal, intended to prevent the registration of trade marks with some intrinsic or inherent feature.

Now read DEMON ALE Trade Mark [2000] RPC No. 9 at p.345.

Look now at page 357, line 33 onwards, to line 12 on p.358. This states the function of a notice of opposition, and criticises the “procedural practice that seems to have grown up in the past” of not preparing proper pleadings with proper particulars of the parties’ contentions.

Note in particular lines 16-25 of the Appointed Person’s decision at page 357, concerning “considerations of justice, fairness, efficiency and economy”. This is very important.

We said earlier that pleadings under section 3 of the Act should be used with great caution. Bear this in mind, and read this case again. Look in particular at the detailed objections by the Appointed Person to the pleadings under section 3(6) on pages 355 – 357.

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The declaration

As you will recall, we are working through the Form TM7 section by section.

Part 7 is the “declaration”. You have to state here that “the facts stated in this notice and in the attached statement of grounds are true”.

Part 8 is largely self-explanatory. You need contact details in case the Registry has a query that it can settle by phone (for example, concerning the number of pages of enclosures with your Form TM7).

Section 3 as grounds of opposition

The next page of the TM7 requires you to tick and complete the grounds you wish to raise under section 3 as grounds of opposition.

You need to tick each box as applicable, and also type in why the ground applies.

So if you wished to oppose under section 6, you would tick the box for this section and type in the space provided: ……….. because Mr Fisher was acting as a distributor for supply of Mr King’s products between 2001 and 2005 and is not entitled to claim to be the proprietor of the trade mark

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Grounds of opposition based on section 5(1) or (2) Next on the Form TM7 you have space to complete grounds of opposition based on section 5(1) or (2) of the Trade Marks Act 1994. We look at this part of the Form TM7 in detail now.

Important You must use a separate sheet of paper for each earlier mark that you want to bring in to the proceedings as a ground of opposition. You can copy this page of the Form TM7 as many times as you like. In our example, your client, Mr Robert King, owns a registration of the trade mark KINGFISHER for “Stationery; artists' materials; paint brushes” under number 2246246, dating from 10 April 1998.

KINGFISHER is not identical to FISHER KING. So your opposition is based on section 5(2)(b) of the Act and you need to tick the appropriate box on the Form TM7 to say so. You need to fill in details on the Form TM7 of the earlier trade mark. Fill in The number (2246246) That it is a UK mark (registered at the UK Trade Marks Registry) A representation of the mark (block capital typescript, KINGFISHER) The goods or services (including their class) covered by the earlier mark (“stationery; artists' materials; paint brushes” in class 16)

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You now need to state which goods or services in the application are identical to or similar to those covered by the earlier mark.

In our example, Mr Fisher has applied to register FISHER KING for “stationery and adhesives”.

“Stationery” is a term used in both specifications so is identical. We think there is an argument that “adhesives” are similar goods to “artists’ materials”.

Statement of use

Notice at the bottom of this page of the Form TM7 the little section that reads

“If the earlier mark has been registered for five years or more before the publication of the mark you are opposing, state which goods or services the earlier mark has been used on in that time, or state why the mark has not been used in that time”.

You will remember that we advised you right at the start to find out what use your client had made of his mark in the past five years.

You need that information in order to complete this section of the Form TM7.

As we see below, the applicant is likely to call for proof of your client’s use.

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Grounds of opposition claimed under section 5(3)

On the next page of the Form TM7, you see a similar page to the previous one. This page deals with any grounds of opposition claimed under section 5(3) of the Trade Marks Act 1994.

When you are relying on section 5(3), you will see that you must at least outline why your mark has a reputation and must outline why the use of the mark opposed would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. Merely mentioning the statutory provision is not sufficient.

Grounds of opposition claimed under sections 5(4)(a) and 5(4)(b)

The next page of the Form TM7, again, is a similar page to the previous one. This page deals with any grounds of opposition claimed under sections 5(4)(a) and 5(4)(b) of the Trade Marks Act 1994. We look in more detail later in this module at the sort of evidence that you are going to need to prove you are entitled to object under sections 5(4)(a) or (b).

All the other grounds of opposition The final page of the Form TM7 is a “catch-all” for all the other grounds of opposition. In practice these are rare. If you are claiming the trade mark is entitled to protection under the Paris Convention as a well-known mark, you must support this claim with an explanation. We suggest that you discuss the other grounds for opposition (such as opposing the amendment of regulations for collective or certification marks with your trainer).

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Please spend a few minutes now completing the Form TM7 on behalf of Mr King. When you have finished this Module, please take the form and discuss it with your trainer.

Filing the Form TM7

You file this at the Trade Marks Registry in the usual way – either in London or Newport, by hand, by courier, by post or by fax. Electronic filing of notices of opposition is currently under discussion and may be available soon. You should file with a covering letter, marking your letter “FOR THE ATTENTION OF LAW SECTION”

Important Note that the TM7 must be received by the Registry on or before the last day of the opposition period. If it is even one day late, the opposition fails. These must also be accompanied by the fee (£200 at the time of writing). If they are not, or the fee is late, the opposition is incomplete and fails. If you are asking the Registry to debit money from your Office’s current account at the Intellectual Property Office, there MUST be enough money in that account, on the day the opposition is filed, to meet the fees. The Registrar has no discretion to accept money “on account” later; the full fees must be met by the deadline, or the opposition fails.

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If the applicant is not resident in the UK or does not have a place of business in the UK, you should apply to the Registry for security for costs at this early stage. You will not be able to sue for recovery of costs awarded if someone outside the UK decides not to pay if your client is successful and is awarded costs. (However, we look below at the situation where the person belongs in a Brussels Convention country.)

Now go to www.ipo.gov.uk/tmmanual-chap7-law.pdf, and read PDN 14 Security for costs under Rule 61 of the Trade Marks Rules 2000, dealing with security for costs, now. You will see that the Intellectual Property Office does not award security for costs automatically. It will consider awarding security only if you apply for it. Furthermore, the award will not be a “standard” amount but will be proportionate to the case and only awarded if the case (and, if necessary, evidence) merits it.

Brussels Convention countries

You should also please read the Intellectual Property Office Practice Note on Security for Costs

You will see that if the other party is a national or resident of a state which is party to the Brussels Convention, the Registrar will need to be convinced by evidence that there is likely to be substantial difficulty in enforcing an ordinary award of costs before he will issue an order for security for costs.

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Scrutiny of Form TM7 by Trade Marks Registry

You read in the DEMON ALE case that the Registry (at the time this case was heard) was planning to take a more proactive role in intervening in with notice proceedings at the pleadings stage. They have now issued their practice on this.

Go back to the leaflet at www.ipo.gov.uk/tm/info/oppoaiti.pdf, which gives more detail about this.

Then answer the following questions. 1.

What does the TMR do on receipt of a Form TM7?

What happens if the TMR does not understand something?

The answers are on the next page.

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How did you get on? 1.

They check the Form TM7 to make sure the opponent has Sent it inside the three month deadline Paid the right fee Filled it in correctly Given enough information for the opposition to go ahead - and then send a copy of the Form TM7 to the applicant.

The Trade Marks Registry will write to the opponent, allowing them 21 days to put matters right.

The next stage in the opposition proceedings is up to the applicant.

Use of the “cooling off period”; Forms TM9c and TM9t

The cooling-off period

Now please read Rules 13(4) and 13(5)

You will recall that the Rules provide for a total of 12 months, after the filing of the Notice of Opposition but before the filing of the TM8 (Counterstatement) for the parties to reach a negotiated settlement.

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Form TM9c The party requesting a cooling-off period completes Form TM9c. The form must be filed before expiry of the three month period for filing the Form TM8; no extension is possible. Remember to give the details of the application (the mark opposed) as well as the opposition number allocated by Law Section. Before filing the form you must have obtained the other party’s agreement (in writing or by telephone). The registry will notify both sides that the TM9c has been accepted or rejected. In case it is rejected, don’t leave filing it to the last minute! The Form TM9c may be filed by fax. The Registry has a special fax number for this purpose. Alternatively, you can complete and file the Form TM9c electronically using a web form on the Intellectual Property Office website. See www.ipo.gov.uk/tm/t-forms/t-forms-tm9c.htm

Negotiated Settlement Mr King may tell you to file a formal opposition. On the other hand, he may tell you, for example, that FISHER KING has been used for the goods covered by Mr Fisher's application for years and he's never experienced any confusion or The proprietor of FISHER KING is a good friend of his and they often refer customers to each other - he certainly doesn't want to upset this relationship or He only uses KINGFISHER on a range of artists' materials, including watercolour, oil and acrylic paints and paint brushes and FISHER KING is only used in respect of glues, which he doesn't sell, so he doesn't think there will be any problems.

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These things may well be true - and you can see why, under the circumstances, he doesn't want to oppose.

But you feel that simply ignoring the application is not in the best interests of your client. The things he has told you may apply now - but in the future one or other of the proprietors may want to expand their range of goods - and there could be an overlap.

So you could suggest to Mr King that he seeks an agreement with Mr Fisher, the proprietor of FISHER KING, that protects both their interests and tries to ensure that there will be no confusion in future. (We'll look at such agreements shortly.)

As the time allowed for filing notice of opposition is fairly short (remember – you only have 3 months from the date of publication of the mark - you should write straight away to the applicant - or, if he has an agent, the agent, advising them of your client’s concern. You can then also, if your client so wishes, make an offer of a negotiated settlement. Always head such letters “WITHOUT PREJUDICE” for legal reasons. (A “without prejudice” letter is one that cannot later be produced in court as evidence. It allows you to make statements that might prejudice your case if they were available for everyone to see.) In our example, you are writing to Mr Fisher's agents notifying them that you propose to file opposition in good time and inviting Mr Fisher to consider a settlement. You may decide not to offer to come to an agreement the first time you write to Mr Fisher's agent - you may prefer to wait and see what the response is - but if the relationship between your client and theirs is amicable, it will in the best interests of everyone to come to an agreement as quickly as possible.

You will probably negotiate the exact terms of the settlement, in consultation with your client, with the other side, or his agent. In this case, after some correspondence, you have offered the following terms - always headed “WITHOUT PREJUDICE”

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On condition that Mr Fisher Undertakes to use the mark FISHER KING only in respect of adhesives included in class 16 and Limits the specification of goods covered by the application to "adhesives" and Undertakes not to object to your client's use and/or registration of the mark KINGFISHER in respect of artists' materials

Mr King undertakes To withdraw the threatened opposition to Mr Fisher's application as soon as he has received confirmation that the specification of goods has been amended to "Adhesives" and Not to object to any use of the mark FISHER KING made by Mr Fisher in respect of adhesives in the future.

Both sides have accepted these terms. You can now draw up an Agreement, for signature by both parties. Such documents are normally called “Delimitation Agreements” or “Prior Rights Agreements”. You should remember to include The full names of both parties The terms of the Agreement and the undertakings by both sides A statement that both parties agree that this Agreement inures to the benefit of their “heirs, successors and assigns”.

The agreement should be dated and signed by both sides.

A document like this is a contract between the two parties.

BLACK Contracts A contract is the legal term for a two-party agreement like this. There are wellestablished rules which govern all contracts if they are to be recognised in law. For these purposes, you should note A contract should show the “consideration” offered by each side in return for the other party fulfilling its side of the agreement. The consideration does not have to be a monetary one (although sometimes one side will agree to pay the other's costs, for example). In the case we have just looked at, Mr Fisher has undertaken to limit his application and not to attack Mr King's rights, and in return Mr King has undertaken to withdraw his threatened opposition and not to object to specified future use of the mark. Mutual undertakings are the “consideration” in this case. If one side then fails to fulfil its obligations under the contract, the other person then has the option of taking action for breach of contract, which can be easier to pursue successfully than, for example, an action for infringement of his trade mark. Also The contract should be in writing in this case, to make the terms clear to all parties.

Form TM9t It may be that despite your best endeavours, negotiations break down. Either party in opposition proceedings can request that the cooling-off period is terminated, by completing Form TM9t. The Form TM9t may be filed by fax. The Registry has a special fax number for this purpose. Alternatively, you can complete and file the Form TM9t electronically using a webform on the Intellectual Property Office website. See www.ipo.gov.uk/tm/t-forms/t-forms-tm9t.htm If the cooling off period is terminated, the applicant has 1 month after the expiry of the cooling off period to file the TM8 (Counterstatement). We deal with this later.

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The applicant’s defence against an opposition on Form TM8 (the Notice of Defence and Counterstatement)

Read Rule 13(3) The applicant must file Form TM8 within three months of the date on which the copy of the notice of opposition and statement of case is sent by the Registrar to the applicant. Note this is not three months from the date the applicant receives this.

What happens if the applicant doesn’t file the TM8 by the deadline?

Now read Rule 13(6) If the applicant doesn’t file a TM8 and Counterstatement in good time, he is deemed to have withdrawn the application for registration.

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Preparing the Form TM8 (Notice of defence and counterstatement)

We now look at how to complete the Form TM8. It is not difficult, and is a lot shorter than the Form TM7.

Please go to www.ipo.gov.uk/tm/forms/tm8.pdf, where you will find form TM8. Print it out, and look at it. You see in part 1 that you need to fill in the application number and (lowest) class of your application. In part 2, you need to fill in the applicant’s full name. In part 3, you must also fill in the Opposition number. This is the number (which is different from the application number) allocated by the Law Section to the Opposition. Part 4 is self-explanatory and you should fill in your firm’s details here. Parts 5 and 6 are important. They are the sections of the Counterstatement that allow you to challenge the opponent’s claim to have used his earlier mark (see our discussion earlier in this module).

We now look at preparing the Counterstatement (part 7 of the Form TM8).

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Look again at Tribunal Practice Notice TPN 1/2000 at www.ipo.gov.uk/ipo/p-decisionmaking/ p-law/p-law-tpn/p-law-tpn-2000/p-law-tpn-2000-tpn12000.htm In particular, you should read paragraphs 23, 24 and 25.

Now try to answer the following questions. 1.

What must the applicant state in the Counterstatement?

What is the purpose of the Counterstatement?

Are very brief Counterstatements acceptable?

What happens if an allegation is not dealt with in the Counterstatement?

What happens if the Counterstatement is clearly inadequate?

Now look at the answers.

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The answers

Which allegations they deny – and why.

To narrow down the field of dispute.

No – the old “deny everything and don’t admit the rest” style of Counterstatement, which you may see on old office files, are not permitted any longer. The Counterstatement must deal specifically with every allegation made in the Statement of Case.

It is deemed to be admitted by the applicant.

The Intellectual Property Office may refuse to serve it.

Don’t forget that, just as the opponent was required to complete a Statement of Truth on the Form TM7, you must also do so on the Form TM8, in part 8.

Part 9, the final section of the TM8, requires you to give contact details in case the Registry has any queries about your Form TM8.

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Counterstatements

Now re-read Tribunal Practice Notice TPN 4/2000 at www.ipo.gov.uk/patent/p-decisionmaking/ p-law/p-law-tpn/p-law-tpn-2000/p-law-tpn-2000-tpn42000.htm. In particular, read Paragraphs. 19 – 22.

Then answer these questions.

What should the Counterstatement set out?

Can Counterstatements be amended after filing them?

The answers are on the next page.

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How did you get on?

The reasons for denying a particular allegation and if necessary the facts on which you rely in your defence.

Yes, although the Registrar needs to be persuaded that the amendment is justified (for example, that it is correcting a clerical error).

Form TM8

Now try completing form TM8, as if you were acting on behalf of Mr Fisher. Again, talk to your trainer about it when you have finished this Module.

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Challenging the Grounds of Opposition (“Pleadings”)

You read above that the Registrar gives the Applicant the opportunity to challenge the pleadings.

Re-read Tribunal Practice Notice (TPN 4/2000) paragraphs 6 and 7 (www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-tpn/ p-law-tpn-2000/p-law-tpn-2000-tpn42000.htm), then answer the following questions.

How do you challenge the Opponents’ pleadings?

Can you raise issues not already raised by the Registrar?

Does your challenge result in an extension of the time to file the TM8 and Counter-statement?

Now look at the answers.

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Check your answers. 1.

In writing to the Registrar at the earliest opportunity.

Yes – in writing.

No - and this is very important. If you are seeking to challenge the Statement of Case at an early stage, this cannot result in the period for filing a counterstatement being suspended or extended.

You could find what are in effect parallel proceedings commencing – on the one hand, you must file your TM8 and counterstatement in good time on the basis of the Statement of Case that was filed by the opponent. In parallel, you could be attending an interim hearing, and possibly preparing separate evidence in support of your challenge, to challenge one or more of the opponent's pleadings.

The Registrar’s preliminary indication If the opposition includes sections 5(1) or 5(2) of the Trade Marks Act 1994, the registrar will issue a preliminary indication as to whether the opposition is likely to succeed on these grounds. The parties have one month in which to consider whether they wish to accept the indication. The preliminary indication is not binding, but in practice most oppositions are settled at this stage. If it indicates a partial success for the opponent, the mark will be registered for the goods/services for which the opposition did not succeed. If this involves rewriting the list of goods, rather than mere deletion, then the applicant must file Form TM21 to amend the specification. If either party wishes to continue the proceedings, they must file a Form TM53 within one month from the date of the preliminary indication (“the indication date”).

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Next, we will take a more detailed look at evidence.

Evidence in Opposition Proceedings

If the applicant has filed their counterstatement in good time, your next step, as agent for the opponent, will be to file evidence in support of the opposition. You normally have three months from the date on which the copy of the TM8 is sent by the Registrar in which to do this (known as “the initiation date”), although extensions may be possible, with good reasons and provided the applicant doesn't object. (If the applicant does object, both sides will normally go to an interlocutory or interim Hearing to argue the case for and against the extension.)

Definition of Evidence This is defined in the Oxford English Dictionary, as “Information whether in the form of personal testimony, the language of documents, or the production of material objects, that is given in legal investigation, to establish the fact or point in question”.

Section 69 of the Act governs the filing of evidence – please read it carefully now.

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Then read Rules 54, 55, 56, and 57.

Note The Registrar will allow parties to be heard before taking a decision, and will give at least fourteen days’ notice of a hearing concerning an extension request How evidence is admitted – look again at Rule 55 and 56, and make notes, if you want to remind yourself of this later on The Registrar may – and in practice will – impose time limits.

Still on the subject of the Registrar’s powers, please read Rule 58.

Forms of evidence Evidence can be given as A Witness statement A Statutory declaration An affidavit Oral evidence (rare) and witnesses (rarely) may be cross-examined. Witnesses should, as a general rule, limit themselves to facts within their own knowledge.

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Witness statements, statutory declarations and affidavits should have a title identifying the matter in question, and should show the name and position of the person making them, and state why the person is competent to make the declaration. It is usual for a declarant from a non-English-speaking country to say that he or she is competent in the English language. If you are filing a statutory declaration or affidavit, the person must sign in the presence of someone authorised to administer oaths – in this country, you are likely to use a solicitor; if the document is signed in another country, it must be before someone authorised, and show where, when and before whom the document was signed. You should file any relevant supporting evidence at the same time, as an exhibit – and exhibits must also be identified and referred to in the main evidence. If someone is administering an oath, they must also see the exhibits, so that these can be sworn to, if appropriate.

Evidence in a foreign language If you are filing evidence in another language, you must also file a translation into English, with for example, a witness statement from the translator certifying that it is a true translation and that he or she is competent to translate the material.

Hearsay evidence

Please read Intellectual Office Practice direction PDN08 on hearsay, available on the website and in [1999] RPC 294. Read it twice if necessary, and make any notes that you might want to refer to later.

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You should ensure that your clients are aware that, as a general rule, any documents you file at the Trade Marks Registry are available for public inspection. However, if your client has a particular concern over a piece of evidence, you can request confidentiality. You must explain exactly why your client wants to keep the item confidential, and must specify whether your client simply does not want the evidence to be a matter of public record or whether your client also wants to withhold it from the other side in the proceedings (or make it available only to their agents).

The Registrar will normally take the view that any party to the proceedings has the right to see all the evidence in question, and will agree to issue a direction preventing this only in exceptional circumstances.

Duplication of evidence

Each case should, as far as possible, have its own original evidence. If you are relying on evidence filed in an earlier case, this may be acceptable. You should file a copy of it with a new witness statement.

What happens if an opponent doesn’t file any evidence? The Registrar may deem that the opponent has abandoned proceedings, in which case the application should be able to proceed to registration. However, in some cases, the Registrar will allow the proceedings to continue if the opponent so requests. This is most likely to happen where the opponent Has based part or the whole of the opposition on an earlier registered right and Stated that they intend to make submissions at a hearing. If the opponent does not then ask for a hearing, or comply with agreed procedures, the Registrar may then deem the opposition abandoned, and the applicant may seek an award of costs.

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Types of evidence If you are trying to prove a case under any of the grounds of opposition we have looked at under section 3 of the Trade Marks Act 1994, you are going to require specific evidence directed to the ground(s) you have raised. This sort of evidence is generally not the sort of thing you are ever likely to be involved in as a new trainee. If your opposition is directed to sections 5(2) (a) or (b), there is rarely any need to file evidence. The Registrar is more than capable of comparing marks and goods/services using the standard tests set out in case law. (We looked at these in the module on searching and comparing marks).

Evidence in Respect of section 5(2)(b) Grounds of Opposition The main ground on which your client is opposing, in our example of KINGFISHER and FISHER KING, is that the use of a mark so close to his own would be likely to deceive or cause confusion. So if you decide to file evidence, rather than relying purely on a comparison of the marks and goods, your evidence will have to prove such a likelihood of confusion.

Think now about how you could obtain suitable evidence that people would be confused or deceived. Make a note of your ideas. Then read on.

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To obtain suitable evidence of confusion, you'll probably send out a questionnaire to people in the trade (rather than the public). This will ask them whether they identify the applicant's mark with any particular goods or services, and if so, to specify the goods or services. Be careful not to ask leading questions - you shouldn't prompt people to give the "right" answers. And your questionnaire shouldn't show the identity of your client. We suggest a format in the Silver Module. Then, depending on the replies to your questionnaire, the next step is to prepare Witness Statements (or Statutory Declarations) from the people who have replied and can give evidence for your client's case. You should not file any evidence which hasn't been sworn as a Witness Statement or Statutory Declaration.

Then you will File a Witness Statement of your own, saying how you got the information Append a copy of the questionnaire you sent out as an Exhibit to your Declaration

You might consider also placing "trap orders" (asking for one product to see if you are offered the other) for evidence of confusion. Again, you will have to file a Witness Statement of your own, stating how you obtained this evidence. It is usual to file evidence in opposition proceedings in two parts The main evidence from the opponent outlining the facts on which he is relying - his registrations and the use of his mark. Remember that it is up to the tribunal to decide whether this is sufficient evidence to prove the case. You will frequently see evidence containing the views of the declarant on the likelihood of confusion as a consequence of the use made. This is useless – it is merely an unsubstantiated allegation, and is not evidence. The trade evidence.

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Most evidence is directed to section 5(3) and/or sections 5(4) (a) or (b), and we look at these now.

Evidence in Respect of Section 5(3) Grounds of Opposition

Section 5(3) provides protection for earlier marks that have a substantial reputation, even though the goods or services in the new application may not be similar. Please note that you will need, in this case, to prove that the earlier mark has such a reputation – merely proving that the mark has been used, even on a wide scale, is not the same thing.

However, you don’t need to prove that there would be confusion if the later mark were registered. (This contrasts with the position if you are relying on Section 5(2), where you do need to demonstrate the likelihood of confusion.)

So – what does your evidence need to prove? Write down your ideas, then read on.

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Your evidence must Prove the reputation of the earlier trade mark Prove that registration of the later mark would take unfair advantage or be to the detriment of the later mark.

There is more about this in a decided case – Audi-Med Trade Mark [1998] RPC 863. Make a note to read it when you have finished this Module.

Evidence in Respect of section 5(4)(a) Grounds of Opposition

You are likely to plead this in many cases, particularly with regard to a claim for passing off. (We cover passing-off actions in the Yellow Module.) But do bear in mind that it is not a “catch-all”. If you have a case under section 5.5(2), it may be better to rely on that and not bring section 5(4)(a) into it at all. When considering this plea, a Hearing Officer will consider it in the light of the criteria for passing off – that is, whether The opponent’s goods or services have goodwill, or a reputation, in the relevant market, under the unregistered mark in question The applicant has made a misrepresentation (this does not have to be deliberate) which may lead to the public believing that its goods or services are those of the earlier unregistered trade mark owner The opponent has suffered, or is likely to suffer, damage.

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Burden of proof

The person opposing the application must show sufficient detail about their earlier use of the unregistered mark. You should show How the mark has been used The scale of use The precise goods or services The length of time the mark has been used How geographically widespread the use has been The type of customers When and how the goods or services sold under the mark have been advertised That there is goodwill or a reputation in the business (which is not the same as mere evidence of use)).

It will also be very helpful if you can show evidence of Likely – or, even better, actual – confusion and/or deception

It is not always easy to prove an opposition on these grounds. Minor confusion, or confusion where your client doesn’t actually suffer any damage, will not suffice. This is, of course, another reason to urge your clients to try to register their marks at the earliest possible stage, wherever this is possible. However, there will always be cases where you do have to oppose on the grounds of earlier unregistered rights in a mark.

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Now read WILD CHILD Trade Mark case [1998] RPC No.455, and note the Appointed Person’s strong remarks on the pleadings filed, and his comments on the nature of the evidence needed to establish likelihood of deception or confusion. Note the evidence that was filed and the reasons it was deficient, on page 462.

Evidence of the Applicant’s Earlier Rights Frequently, you will see cases where agents have tried to defend the opposition by arguing that the applicant has a “family” of marks, of which the mark opposed is only one. Would the position be different if the Applicant was also proprietor of other marks with the prefix FISHER? Imagine that Mr Fisher also had a range of trade marks he used as follows FISHER QUEEN (for teenage girls magazines) FISHER PRINCE (for books) FISHER JACK (for magazines on fishing) Such evidence may very well be relevant. It has long been the Registrar’s practice to regard a number of similar marks in the same ownership which incorporate an identical element as a family of marks, and that if another party applies for a mark incorporating that element, the public may assume that the new mark originates from the same undertaking as the family of marks. This reasoning was based on the BECK KOLLER case 64 [1947] RPC 76 under the Trade Marks Act 1938 – but this is still good law. So if there are a number of marks forming a “family” in the name of a trade mark proprietor, the Registrar will take this into account when assessing confusability in a global perspective, as required by Sabel v Puma and Canon.

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The European Court of Justice in Sabel BV v Puma AG Case C-251/95 at paragraph 23 said that, “...Global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 4(1)(b) of the Directive -"...there exists a likelihood of confusion on the part of the public..."- shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.”

However, if relying on such an argument, you must file evidence that the existing earlier trade marks are in use. The state of the Register is irrelevant in these proceedings, unless the marks relied on are also being used. In other words, it is what is happening in the marketplace that is important. Simon Thorley QC, acting as the Appointed Person, gave consideration to this point in the "Ener-Cap" appeal, [1999] RPC 362, believing the question of "families of marks" to be irrelevant to Section 5(2)(b) but that it could be relevant to an argument under 5(4) of the Act.

Evidence of non-Confusability You may think of filing evidence that the marks are not, in practice, confusing. If both marks are in use, and have been for a number of years, you could file evidence showing the actual manner of use of the respective marks. You might show, for example, that they are sold through different trade channels (or indeed, through the same trade channels). Refer to the Silver Module, where we discussed British Sugar v Robertson (the TREAT case) for the sorts of evidence which might be useful.

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Survey Evidence

You may also think of submitting trade survey evidence. (We discussed trade surveys earlier.)

A trade survey would be carried out by experienced market researchers, who (with your assistance) would frame a set of questions to ask which – hopefully – will show that the two marks are not seen as confusingly similar.

In many of the cases you have read to date, you will see that survey evidence has been severely criticised. Frequently the judge considers it almost worthless.

The main problems in survey evidence (apart from the cost) are Getting a broad enough cross-section of the relevant public to answer (a few people in your office would not be enough) Framing the questions so they are non-leading (see above) Framing the questions so that they do not cause the respondent to stray into areas of thought or cogitation which she would not otherwise have troubled her mind about Avoiding producing standardised witness statements to the court which clearly have not been prepared by the respondent, and have obviously been simply standardised, then signed.

Survey evidence was carefully considered by the Court in the Imperial v Philip Morris [1984] RPC 293 at 302-3, the RAFFLES case, and guidelines set down in this case which are still relied on for surveys to be admissible. Ask your trainer about it. You will find that the Courts very often do not like survey evidence. The ECJ doesn’t like it much either – see the General Motors v Yplon case [2000] RPC 572; and also the Tusky/ Gut Springenheide case [1998] ECR I-4657.

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Challenging the Opponent’s Evidence This is frequently done. If you disagree with points made in the opponent’s main evidence, you would direct your evidence so that it replies, and hopefully overcomes, the points you object to. You must go through the evidence carefully and pick out all the points that you disagree with. If you don’t contradict him, his evidence will stand. If you object to the opponent’s evidence in reply, perhaps because you think it is not strictly in reply, or raises new matters that should have been brought in at the principal evidence stage, you may apply to the Registrar to have it struck out. You may well find that you have to attend an interim hearing if the opponent objects to your request for striking out his evidence.

Revocation proceedings As you have read above, you can challenge the use of an earlier mark in UK opposition proceedings. But remember – in opposition proceedings, if the earlier mark is more than 5 years old, from the date of grant of its registration, your first line of defence is often to apply to revoke the earlier mark. Depending on what evidence the opponent produces in support of his earlier right, you could consider launching separate revocation (cancellation) proceedings. We cover revocation proceedings in detail in the Pink Module.

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Substitution of Opponents

The Registrar has inherent jurisdiction to allow substitution of one opponent for another.

Go to www.ipo.gov.uk/tmmanual-chap7-law.pdf, and go down to section 8.2, to learn about practice relating to the substitution of opponents.

Now read on to learn more about further stages in opposition proceedings.

Further Stages in the Opposition Proceedings Once you have filed your evidence on behalf of the opponent, the applicant or their agent will file their own evidence, in support of the application (see below). They have three months in which to do this, although the Registry may allow extensions of time with good reason. After that, again within three months, you will be able to file your client's own final evidence (known as evidence in reply) - but at this stage, your evidence must be strictly in reply to that filed by the applicant. You can't raise any new points at this stage. (Exceptionally, new grounds may be admitted, but then the other side will be given an opportunity to comment/reply.)

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Extensions of Time in the Opposition Process

Go back to the leaflet at www.ipo.gov.uk/tm/info/oppoaiti.pdf and read the section covering extensions of time.

Then try to answer these questions. 1.

What form is used to request an extension?

What are the fees paid with the form for the extension request?

Must you copy this to the other side?

Who makes the decision as to whether the extension is granted?

Can the other side object to an extension?

Now see how many you answered correctly.

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The answers. 1.

Form TM9.

£50 – per request.

Yes.

The Trade Marks Registry, which then tells both parties.

Yes, and frequently do so. Objections against the Registrar’s decision must be made within 14 days from the date of notification, in writing.

Requests for extensions of time in which to appeal against the Registrar’s decision We look at the Hearing itself and the appeal process shortly. Just note now that extensions of time in which to appeal against the Registrar’s decision are possible, but will only be granted in exceptional circumstances.

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Case management procedures, the Hearing itself, the Award of Costs, and Appeal Procedures from the Registrar’s Decision

Re-read Tribunal Practice Notice TPN 1/2000, Paragraphs 38 to 48 You will see that the Trade Marks Registry has adopted case management procedures.

Please read Tribunal Practice Notice TPN 5/2000. This Notice sets out what happens in detail after the end of the evidence rounds.

Hearings The hearing itself is a fairly formal affair – unlike hearings held during the application process. The hearing is taken by a senior officer of the Registry, who sits at the top of the room with tables arranged on both sides. There is a recorder present who takes a written transcript and tape of everything said. The parties and their barristers (if used) sit on either side. There are chairs available for witnesses or spectators. Opposition hearings are in public – you can go and watch one.

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Award of Costs The registrar makes an award on a scale charge, which does not reflect the actual amounts spent. For proceedings commenced after 22 May 2000, they are: 1.

Application or Notice of Opposition, and accompanying statement

£300, plus statutory fee, if any

Considering statement of case in reply

£200

Considering Application or Notice of Opposition and accompanying statement

£200

Statement of case in reply

£300

Preparing and filing evidence

up to £1,500

Considering evidence

half of item 3

Preparation for and attendance at Hearing

up to £1,500

Where a party appears in person, or where attendance of a party’s witnesses is required by the opposite party, allowance will be made for general expenses and travelling, but the allowance for general expenses will normally exceed £250 per day, nor an overall maximum per party of £750 per day.

Remember that if you did not give the applicant a chance to withdraw their application before filing the opposition, your client may not be awarded full costs if their case is successful at a full opposition hearing.

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Appeal from the Registrar’s Decision

Before considering an Appeal, you must have received from the Registry the Registrar’s written grounds of her decision. The Law Section will send it to you, several weeks (or longer) after the hearing was held.

Please re-read Rules 63 and 68

You will see that there are two routes of Appeal from the decisions of the Registrar To an Appointed Person To the High Court

In both cases, the appeal period is 28 days, which may be extended only with good reason.

We discussed the respective functions of the Appointed Person and the High Court in the Red Module. If you want to remind yourself of this, please look back at the Red Module now.

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Future Developments

In the near future oppositions may become more important, and even more frequent, than they are now.

Take a look at section 8 of the Trade Marks Act 1994.

In many countries, the Trade Marks Registries do not raise objections on relative grounds – that is, that earlier rights exist. Section 8 of the Trade Marks Act 1994 makes provision for this to become the case in the UK, with the object of harmonising with other European countries.

Following a consultation, the Registry has recently announced that it intends to cease examination on relative grounds.

When this takes effect, the Trade Marks Registry will no longer raise objections based on earlier applications or registrations. This will mean that the only way for your clients to prevent registration of marks too close to theirs will be to oppose them. (This is already the case with Community Trade Mark applications.) So it will be essential for you to watch for applications that might conflict - and this includes UK applications Community Trade Marks Registrations under the Madrid Protocol.

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You are almost at the end of this long Module.

Take a moment now to review what you have learned and make notes of any points you would like to go back to later, or discuss with your trainer. Much of what we have said here will become clearer when you become involved with oppositions yourself.

Then try the quiz.

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Test yourself

What is the fee for filing an opposition?

What happens if the applicant fails to file form TM8 within three months of the notification date?

Which Rule governs the filing of opposition to applications published before registration?

If a client’s mark is over five years old, what must you ask them?

If you are relying on section 5(3) as grounds for opposition, what must you mention?

Apart from the Trade Marks Registry, should you send a copy of your TM7 to anyone else?

How long do you normally have for filing your evidence?

Which section of the Trade Marks Act 1994 governs the filing of evidence?

Can you base an opposition on an unregistered mark?

10.

May an opponent be substituted for another one?

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11.

In law, what is a prior rights agreement?

12.

What are the routes of appeal from a Registrar's decision?

13.

What period of time is allowed for filing the appeal?

14.

When does the registrar issue a preliminary indication?

Check your answers.

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The answers. 1.

£200.

The Trade Marks Registry deems their application to have been withdrawn – it is not registered (unless the applicant has applied for a cooling off period).

Rule 13.

You must ask your client Whether the trade mark is being used – either by him or by a licensee What (precise) goods are being sold under his mark The approximate annual turnover for each of these goods The extent of the national use of the mark An idea of the level of advertising expenditure promoting the mark for the goods. If the mark is more than ten years old or abandoned through non-renewal, check for a CTM claiming UK seniority

You must at least outline why your mark has a reputation and must outline why the use of the mark opposed would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. Merely mentioning the statutory provision is not sufficient.

No. The Registry will send a copy to the applicant.

Three months from the initiation date.

Section 69.

Yes – but you will probably need to show detailed evidence of the use of the unregistered mark.

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10.

Yes, where the mark on which the opposition is based has been assigned.

11.

It is a contract between parties.

12.

To an Appointed Person To the High Court

13.

28 days.

14.

When the opposition includes sections 5(1) or 5(2) of the Trade Marks Act 1994.

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BLUE MODULE

Infringement & Civil Procedures for Trade Mark Cases Briefing Counsel

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In this Module, we look at the rights conferred by a trade mark registration, the acts which amount to infringement of those rights and the limitations of the effect of a trade mark registration. We also deal with comparative advertising and remedies for groundless threats of trade mark infringement, moving on to look briefly at briefing Counsel, various proceedings and the relief available to claimants.

To complete this Module, you will need The Trade Marks Act 1994 The Harmonisation Directive (First Council Directive 89/104/EEC) The Trade Mark Handbook Pfizer Ltd v Eurofood Link (UK) Ltd [2000] RPC 227 Antec International Ltd v South Western Chicks (Warren) Ltd [1997] FSR 278

When you have finished this Module, you will have: read relevant sections of the Act; listed actions which amount to infringement; identified the most likely effects of section 21 of the Trade Marks Act 1994; seen examples of Instructions to Counsel and a Claims Letter; and identified the over-riding objective of the Civil Procedures Rules.

You will need about two days to work through this Module.

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The rights conferred by a trade mark registration

Please start by looking at the first sentence of Article 5 of the Directive and then section 9(1) of the Trade Marks Act 1994. You will see that, under the Directive, “The registered trade mark shall confer on the proprietor exclusive rights therein” and under the Act, “The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent”.

Important You should note that the registration does not grant a right of use as such. The registration does not grant the proprietor the right to use the mark.

Section 11(1) of the Act states “A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered”. However, you should remember that under section 47(6), where the registration of a trade mark is declared invalid, the registration shall be deemed never to have been made. So why can owners of registered trade marks not assume that they have rights to use the mark? Note down your ideas, and then read on.

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You should have remembered that there are rights in trade marks other than those granted by a UK trade mark registration, as well as other laws that may preclude use of a mark. Did you list any of these?

Passing Off Section 2(2) of the Act states that “nothing in this Act affects the law relating to passing off”. So a third party may, if applicable, bring an action against the use made by a trade mark proprietor or licensee of a validly registered trade mark. (We talk about rights to bring actions to prevent "passing off" in the Yellow Module.)

Other statutes There are circumstances where a proprietor has obtained a trade mark registration but may not use it because it is barred from doing so by another statute. The most common instance is where a trade mark for a pharmaceutical product is registered, but may not be used until that product obtains regulatory approval for safety, efficacy and so on.

So – the “exclusive right” granted by registration is the right to exclude others from using it.

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The right to prevent use of identical mark & goods

Now read the Tenth Recital of the First Council Directive

You will see that the protection afforded to a registered trade mark “is absolute in the case of identity between the mark and the sign”

Article 5(1)(a) of the Directive states “The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a)

any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;”

The equivalent wording under the UK Act is section 10(1) “A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.”

Interpreting section 10

V This sounds straightforward, but think for a moment. What is meant by “in the course of trade”? What is meant by “identical”?

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Guidance on interpretation

Para. 119.031 to 119.035 of the Trade Mark Handbook ask some pertinent questions as to how section 10(1) is going to be interpreted. Please read them now.

Case law guidance A case which looked at section 10 was Trebor Bassett Ltd v The Football Association [1997] FSR 211. In this case, the Football Association had threatened infringement proceedings because Trebor Bassett was selling packs of confectionery containing cards which had pictures of England Football players wearing their England strip. The strip contained the “three lion” England crest which the FA had registered as a trade mark for items of stationery and materials in Class 16. Trebor Bassett brought a case alleging wrongful threats. The judge decided that Trebor was not in any sense “using” the crest as a sign in relation to cards under section 10(1).

Another useful case is AB Volvo v Heritage (Leicester) Ltd [2000] FSR 253. In this case, an injunction was granted on an application for summary judgment against a former authorised VOLVO car dealer using a trading style “Independent Volvo Specialist”. You will read about summary judgments later in this module, but in this case note that the judge held that the addition of the first and third words did not render the defendant’s mark non-identical with the registered trade mark VOLVO for the purposes of section 10(1).

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Finally, the ARSENAL case ([2003] ETMR 19) and subsequent events have shed a great deal of light on the words “Use in the course of trade”. Please make a note to read these cases when you have finished working through this Module.

Similarity

Now go back to the Tenth Recital of the First Council Directive. You will see that the protection afforded to a registered trade mark “applies also in case of similarity between the mark and the sign and the goods and services”

Read Article 5(1)(b) of the First Council Directive. “The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.”

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The Trade Marks Act 1994

Now look at what the UK Act says.

Read section 10(2) of the Trade Marks Act 1994 -

“A person infringes a registered trade mark if he uses in the course of trade a sign where because – (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”

We consider what is meant by these terms in the Black Module. (The wording of section 5 of the Act mirrors almost exactly the wording of section 10. In other words, grounds which would be successful in an action to prevent registration on relative grounds before the Trade Marks Registry should also lead to a finding of infringement of a registered mark under section 10.)

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The concept of confusion

Remember that the Courts (and the Registry) must now consider the concept of confusion in the light of the ECJ Decisions in Sabel v Puma [1998] RPC 199 and Canon KK v MGM Inc [1999] RPC 117, and subsequent EU case law following these decisions.

In Pfizer Ltd v Eurofood Link (UK) Ltd (Mr S Thorley QC, 10 December 1999, [2000] RPC 227), Mr Thorley considered trade mark infringement under section 10(2) in the light of Sabel v Puma and Canon KK v MGM Inc and concluded that these authorities make plain that there is no automatic bar to a finding of infringement under section 10(2) merely because the goods in relation to which the parties are using their respective trade marks are in some respects dissimilar. He remarked that in all cases it is a question of fact as to whether, notwithstanding the differences between the categories of goods, but having regard to all other factors, the relevant likelihood of confusion is proved.

You should have a copy of the Pfizer case with you. Please read it now. Mr Thorley follows closely the wording of the Tenth Recital of the Directive. You will recall it says “... the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark in the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection; ...” (meaning, the protection afforded by a registered trade mark).

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Right in some circumstances to prevent use where goods are not similar

Now read Article 5(2) of the Directive

You will see that this is a permissive Article – that is to say, it permits Member States to provide that proprietors may, in some circumstances, prevent use where goods are not similar.

There are clearly stated limitations to this right. What are these limitations?

Please note down your answer from memory, then check to see whether you are right.

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The right may only be employed where the proprietor “... has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

The United Kingdom did choose to implement the provisions of Article 5(2). It did so in section 10(3) of the Act. Please read it. You will see that the trade mark must have a reputation in the United Kingdom for section 10(3) to apply. We discussed what is meant by taking unfair advantage of, or acts which are detrimental to, the distinctive character or the repute of the trade mark in the Black Module.

The ECJ Decision in the case of General Motors Corporation v Yplon SA [2000] RPC 15 concerned infringement of the trade mark CHEVY. It held that there must be “a certain degree of knowledge of the earlier trade mark among the public”. In the next line, this is qualified as a “sufficient” degree of knowledge.

What is meant by “the public” in this context? Please write down your ideas, then compare them with ours.

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The “public” (p.577/8 paragraph 24) is defined as “that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.” At paragraph 25, the court makes clear that this is not a matter of percentages. (Compare Jacob’s comments in the TREAT case British Sugar v Robertson [1996] RPC 281, where he talked about requiring “60% public recognition”. These must be regarded as outdated.) The court, in examining whether a degree of knowledge exists, such that the mark is known by “a significant part of the public concerned by the products or services covered by that trade mark” (paragraph 26), will take into account the usual evidence of distinctiveness. We discuss this in the Silver Module. Again, please make a note to read this important case when you have worked through this Module.

Acts which amount to infringement

Please think about, and then write down how a person can use a sign that would amount to infringement of registered trade mark rights. Then see how you got on.

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The acts which amount to infringement of the registered rights are listed in Article 5(3) of the Directive Affixing the sign to the goods or to the packaging thereof Offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder Importing or exporting the goods under the sign Using the sign on business papers and in advertising.

The Trade Marks Act 1994

The wording of the Trade Mark Act 1994 is the same. Please read section 10(4) Well done if you also thought of applying a trade mark to labels, packaging for goods, or to business papers or material for advertising without the authority of the owner. We will look at this next.

Please read section 10(5).

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Section 10(5)

This section creates a new class of defendant in infringement proceedings, plugging a gap and clarifying doubts which existed under the old law.

It is now an infringement to apply a registered trade mark “to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services” if – when the mark was used in this way – the person doing it “knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee”.

Note that the person doing this is not the primary infringer, but “shall be treated as a party to any use of the material which infringes the registered trade mark”.

However, there are limitations on the rights of the owner of a registered mark to accuse people of infringement.

We will take a look at section 21 later.

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Limitations of the effects of a trade mark registration If one of your clients is accused of trade mark infringement, you need to be aware of possible defences. There are limitations to the rights enjoyed by the owner of a registered trade mark – and these are often the defendant’s best defences in an infringement action.

Section 11(1) limitation We have seen above that section 11(1) of the Act states “A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered…”. This immunity is fraught with problems of interpretation. Some of them are discussed in paragraph 119-087 to 119-089 of the Trade Mark Handbook.

Please read these paragraphs now, and make a note to discuss this commentary with your trainer later on. Section 11(1) is probably best regarded as a legacy of the Trade Marks Act 1938. As we discuss in the Ultramarine Module, section 11(1) depends for its sensible existence on the continuing citation by the Trade Marks Registry of conflicting marks during examination. Put at its simplest, section 11(1) is supposed to act as a safeguard to the small business, which has registered its trade mark. The provision of section 11(1) is supposed to prevent an aggressive larger business litigating the smaller and earlier competitor out of existence.

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Own name limitation; descriptive characteristics & intended purpose limitations

Please now read Article 6(1) of the Directive. You will see that the trade mark “shall not entitle” the proprietor to prohibit third parties from using, in the course of trade Their own name or address Indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering the service, or other characteristics of the goods or services The trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts provided that the use is in accordance with honest practices

The wording of section 11(2) of the Act mirrors the Directive. Please read it. Commentary

Now read paragraph 119-090 to 119-095/3 of the Trade Mark Handbook. This is a detailed commentary on what is quite a complex section of the Act. As you will see from the commentary, the law cannot be regarded as fully settled in this area. But case law does give guidance on the limitations of the effects of a trade mark registration.

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Saving for earlier rights

Please now read the Fourth Recital of the First Council Directive.

You will see that the Directive explicitly “does not deprive the member States of the right to continue to protect trade marks acquired through use”.

However, you should also note that it “takes them into account only in regard to the relationship between them and trade marks acquired by registration”.

Now read Article 6(2) of the Directive. Note that a trade mark registration “shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised.”

In the UK, the earlier right is protected by, in particular, the law of passing off.

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Please read section 11(3) of the Trade Marks Act 1994.

We discuss passing off in the Yellow Module. Section 11(3) is intended to give statutory force to the idea that a small trader, operating honestly in a particular locality, may continue to so operate, despite national registrations obtained by competitors.

However, it is implicit that such a small trader only preserves the existing goodwill he already has at the date of grant of registration of the later trade mark. He cannot then expand out of the area where he has previously enjoyed a reputation. So his ability to expand his business under his unregistered mark is severely limited.

Exhaustion of rights

Now read Article 7 of the Directive and its equivalent UK provision, section 12.

These deal with exhaustion of the rights conferred by a trade mark. We look at this in outline only at this stage, because it is a defence in trade mark infringement proceedings to argue that the goods have been legitimately placed on the market. (We discuss exhaustion of rights in the context of parallel imports in the Rust Module.)

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Limitation in consequence of acquiescence

Please read Article 9 of the Directive. You will see that the proprietor of an earlier registration may not Oppose the use of the later trade mark in relation to goods or services for which it has been used Cancel a later registration if he has known about it for five years and acquiesced to its use.

This section means that such a person cannot bring an action for infringement against the proprietor of the later registration.

The equivalent UK provision is section 48(1). Please take a look at it now.

Then please read paragraph 119-102 and 119-103 of the Trade Marks Handbook, on acquiescence. If you have any questions, make a note to ask your trainer about the points that are puzzling you.

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Comparative advertising

Use of a sign or mark in comparative advertising can, potentially, infringe a registered trade mark, as advertising is specifically referred to in section 10(4) of the Act as one of the uses of a sign (see above).

However, section 10(6) allows the use by any person of a registered trade mark to identify the goods or services as those of the proprietor or licensee, provided that such use is “in accordance with honest practices in industrial or commercial matters”.

Please now read section 10(6) of the Act.

The term “comparative advertising” covers situations where one proprietor refers to the merits of its goods by referring to someone else’s trade mark used on similar - or identical - goods or services.

The term covers, for example, a situation where one car manufacturer runs an advertising campaign comparing its new model, point by point, with a similar car made by a rival manufacturer. It also covers the situation where, say, a supermarket might compare its generic version of a painkiller with a well-known branded version, pointing out that they have the same ingredients, but the supermarket's product is cheaper than the well-known brand.

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Honest practices Some guidance on the interpretation of this comes in the case Barclays Bank Plc v RBS Advanta [1996] RPC 30. In this case, the defendant's advertising for their credit card made comparisons between it and other credit cards, including the Barclaycard Visa card. The claimant argued that section 10(6) did not apply in this case, and the judge criticised the drafting of the section. However, he held that section 10(6) permits comparative advertising provided that it is honest; that is, likely to be considered honest by a “reasonable audience”. Using a mark “in a trade mark sense” does not affect the consideration of honest use. The advertisement must be considered in context to establish whether the use is infringing. It has been said that the effect of this judgment will be to allow greater use of comparative advertising. However, given that the contexts in which advertisements are read vary considerably, it seems sensible that you should always warn your clients to be extremely wary of using comparative advertising.

Please turn back to the Trade Mark Handbook, and take a little time now to read paras 119-073 to 119-077. As further reading, please take a look later at paragraphs 123-020 to 123-032 of the Trade Mark Handbook. You will see then that the topic of comparative advertising is a broad one, and there are other issues and elements of legislation to consider, as well as the Trade Marks Act 1994.

Other aspects In particular, you should think about and discuss with your trainer the effects of industry codes and non-trade mark legislation on this subject. (For example, patent attorneys may not disparage their fellows to gain work.)

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Remedies for groundless threats of trade mark infringement

We referred to threat actions a little earlier. Section 21 of the Trade Marks 1994 provides that, under certain circumstances, someone who is threatened with infringement proceedings without grounds may apply for various remedies.

Read this section now.

Note that this Does not apply to certain acts that are often called acts of primary infringement - where someone may have applied a mark to goods or their packaging for example. Remedies are not available in this instance. Does apply to threats against people such as wholesalers, who may not have been involved in applying the mark to the goods Does not apply to the simple notification that a mark is registered - this is not considered a threat.

In any given case, one or more of the defences or actions we have suggested may be appropriate, depending on the circumstances. Sometimes, however, your clients will have no real defence and may have to cease the infringing use or agree to the other side's terms. Otherwise, they may risk judgment against them.

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Important This area of the law is becoming increasingly complex. It is also one where trade mark agents must take great care.

You should have with you a copy of Antec International Ltd v South Western Chicks (Warren) Ltd [1997] FSR 278. Please read it now. The conduct of certain trade mark professionals was severely criticised by the court. The judge said that it was unacceptable for those who have the status of expert professionals in the trade mark field to use the weight of their professional qualifications to make wild and unsupported allegations of trade mark infringement against their client’s competitors.

Please now read paragraphs 123-036 to 123-051, on “Threats”, in the Trade Mark Handbook. This is a detailed section, and you should discuss what it says with your trainer. Note, in particular, that both express and implied threats to commence actions for trade mark infringement will be caught by section 21. Clever wording of the claims letter (previously called the “letter before action”) will not help you.

Still thinking about section 21, what are the two most important practical effects of it? Make a note of your ideas. Then look at the next page.

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If you are careless enough to send a letter which constitutes a threat under section 21, the recipient has a right of action against you, as well as your client!

This means that, should he choose to do so, the defendant in an infringement allegation can turn himself into the claimant by counter-suing for relief in respect of the unjustified threats that have been made. So rather than you running the litigation, the other side has the chance to set the pace, and if they win, obtain damages from your firm. Always make sure a partner or your Head of Department has agreed to your sending a letter that is, or may be held to contain, a threat.

There is no action under section 21 if proceedings for infringement have actually commenced. (That is to say, a “Claims Form” – previously called a writ – has been served on the defendant.)

So one effect of section 21 is likely to be that parties are reluctant to engage in meaningful pre-trial settlement negotiations. This is of course directly contrary to the spirit and intent of the Civil Procedure Rules, 1999. We discuss these in more detail below.

Now move on to a test for you to see how much you have understood so far.

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Your client, Glass Glories Ltd, makes ornamental glass items, and has registered the mark GLORIANA in respect of glass ornaments and paperweights.

They share their premises with a manufacturer of chandeliers, Venezia Ltd, and have done for many years. Venezia has now been commissioned to produce a series of chandeliers for the recently renovated ballroom of a stately home in which Queen Elizabeth I allegedly once slept - and it is now marketing its newest and most expensive range of chandeliers as the GLORIANA chandelier in honour of its commission. Is this infringement?

The Company Secretary has been sorting through old documents. In the late 1940’s the father of the present managing director of Glass Glories Ltd made a written agreement, on behalf of the company, with the then directors of Venezia Ltd that the GLORIANA mark could be used in respect of chandeliers, subject to the proviso that if Glass Glories ever began manufacturing any type of light fitting, the agreement would be cancelled. The original GLORIANA chandelier was a failure and Venezia Limited dropped the mark after six months. Does this make any difference to the situation?

Your client tells you that they have just learned of a small recently formed company, Du Verre Ltd, which is manufacturing goods aimed at the Christmas gift trade. The new company's catalogue includes musical boxes with glass domes on the top containing Victorian style Christmas scenes. The page in the catalogue is prominently headed “Glassy Glories” and the order form refers to “GLASSY GLORY music boxes”. Your client does not make musical boxes. Is there a case here for Glass Glories Ltd to take infringement action?

Du Verre Ltd is now marketing GLORIANA porcelain dolls, designed to be sold to collectors. Your client is becoming convinced that Du Verre is seeking to take unfair advantage of Glass Glories' reputation as England's best known manufacturer of expensive paperweights and glass ornaments, and the Managing Director assures you that GLORIANA paperweights are "collectors' items". He wants to take action to prevent what he is convinced is infringement. Would you advise him to do so?

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Du Verre's catalogue has expanded to include goods made by other people, and on the front cover they list some of the contents, including GLORIANA paperweights. Is this infringement?

Read on for our answers.

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Our answers.

This is quite difficult to determine. The mark is identical and, since both sets of goods are made of glass, there could be a real risk of confusion, which is compounded by the fact that both companies share premises. If the GLORIANA mark has a reputation in the UK, it may be easier to show infringement under section 10(3) than 10 (2) - but if action is commenced, it is worth considering whether the chandeliers can be considered “similar” to paperweights. We'll look at case law guidance shortly.

This is probably not infringement, because the terms of the agreement allow this - so the mark is being used with the consent of the proprietor even if Venezia Limited has never been registered as a user (under the 1938 Act) and Glass Glories Ltd had long forgotten the agreement.

There may not be a case here - it depends both on whether GLASSY GLORIES would be considered close enough to GLORIANA to be considered “similar” (remember that Glass Glories is a company name, not a registered trade mark), as well as whether the musical boxes would be similar to glass ornaments. The second point is more likely to be successful. Your client may be able to take action to prevent “passing-off” - and you could recommend that they apply to register GLASS GLORIES.

You can tell him that under section 10(3) of the Act, this may be infringement, but he must prove that the GLORIANA mark has a reputation in the UK, and that Du Verre's use is either taking unfair advantage or is detrimental to the reputation of the GLORIANA mark.

Not if the paperweights in question are GLORIANA paperweights made by Glass Glories Limited (see section 10[6]), and sold with their permission.

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Remedies for “passing-off”

We looked at what “passing-off” is in the Yellow Module. By now, you may be wondering what remedies are available to someone who has suffered damage as a result of “passing-off”.

You may have some ideas of your own, or may already have heard something about the remedies available. Jot down any ideas that you have on the subject.

Then read on.

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As in most legal proceedings, different forms of remedy (or “relief”) can be claimed in court. We consider the most common remedies here.

Injunctions

An injunction is a court order forbidding certain acts. A claimant can request either an interim order (formerly known as an interlocutory injunction) or a final injunction

An injunction can take different forms, but usually has the effect of preventing the defendant from doing whatever it is that the claimant is objecting to.

We’ll look first at interim orders. These are sought in one of three ways, depending on whether the claimant is present in court when the claimant’s request for an injunction is considered. With notice (formerly inter partes proceedings) In these, the claimant gives the defendant two clear days notice, and the defendant has a chance to give evidence in court. Both parties need to produce their evidence quickly, although it does not need to be the same sort of detailed evidence that a full trial usually requires. Without notice (ex parte proceedings) When an application is made without notice, the claimant does not give any notice to the defendant, who is not aware that the application for an injunction is being considered by the court. These are usually only allowed in cases of extreme urgency.

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Interim order with notice (ex parte proceedings on notice) The defendant is not given any time to put in evidence, but is given two clear days’ notice, and can appoint a representative at the Hearing.

You have probably realised by now that an interim order – which can have the effect of completely stopping a defendant from using a trade mark until an action comes to full trial – can be a very powerful weapon.

V So – what, if anything, stops someone from using it as a convenient way of damaging a trade rival?

Think about this for a moment. Then read on.

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When will interim orders be granted?

A case known as AMERICAN CYANAMID [1975] FSR 101 sets out guidelines which the courts tend to follow before deciding whether to grant an interim order. The courts consider these in order, and you should think about them, and note them. The court will ask 1.

Does the claimant’s evidence show a serious question to be tried? (If “no”, the order will not be granted.)

Would any damages awarded at trial be an adequate remedy for the claimant? (If “yes”, the order will not be granted.)

Would any damages awarded at trial, if the claimant fails, be an adequate remedy for the defendant? (If “no”, the order will not be granted.)

What is the “balance of convenience”? (Which party would suffer most if the order were granted or refused?)

If the balance of convenience is even, the Court should preserve the staus quo.

Lastly, if the Court has not been able to decide the issue on any of the preceding tests, it will consider the merits of the parties’ substantive cases on the written evidence (affidavits).

As you can see, it’s a very important aspect of the AMERICAN CYANAMID test to try to decide which side would suffer irreparable damage as the result of the grant of an interim order. Very often, after an order has been granted, the effect of grant on the defendant’s business will be so damaging that it’s not worthwhile for the defendant to go on to full trial, and the case is very often settled at the interim stage.

Now we’ll look at some other types of court order that are available to claimants.

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You may already have heard of search orders (previously known as Anton Piller orders) and freezing injunctions (Mareva injunctions).

We won’t look at these in detail here, but we recommend that you talk to your trainer about them.

Summary

Search orders These court orders are made without notice and are granted only where there is evidence of a serious danger that the defendant will remove or destroy evidence before the trial. Their effect is to order the defendants to allow the claimant’s representative to enter their premises and remove evidential material. There are strong safeguards on the rights of defendants, to try to ensure that these orders are not misused.

Freezing injunctions These are granted only when there is evidence that potential defendants will dispose of their assets – by moving them out of the country, for example. This would negate justice because the defendant puts itself out of a position to pay damages to the claimant and/or the claimant’s legal costs. They freeze the defendant’s assets pending resolution of the court action. Again, there are legal safeguards to protect both defendants and third parties, who may have some claim on the assets.

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Final remedies

We’ve now looked at interlocutory remedies. Next, we’ll think about what relief may be granted to a successful claimant after full trial of the legal action.

You may have included final remedies in your earlier notes. If not, or if something new has occurred to you, please write it down now.

Then compare your notes with ours.

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After a full trial, the courts may grant the claimant the following remedies: A final injunction Which can include an absolute prohibition on the defendant using the claimant’s mark Or can simply require the defendant to distinguish the marks clearly Damages Which can be nominal (a successful claimant is nearly always awarded these) Or can be an award designed to compensate the claimant for any loss suffered as a result of what the defendant has done. An account of profits This means that the defendant accounts to the claimant for the profits it made from using the claimant’s mark. This is an equitable remedy, and only granted at the court’s discretion. Note – claimants cannot claim damages and an account of profits – they must choose one. Costs Costs are at the court’s discretion, but are intended to compensate the winning party for those of their legal expenses which were necessary to bring the action – known as “party-party” costs. A formal procedure for “taxing” or assessing them exists, if the parties cannot agree. A declaration An order confirming the claimant’s rights in the mark. Delivery up The court orders the defendant to give the offending articles, in respect of which the mark has been used, to the claimant, for destruction or removal of the offending mark. Destruction The defendant may be ordered to destroy the offending articles, usually under supervision of an officer of the court.

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Note – delivery up and destruction are not granted automatically to a successful claimant. The court may refuse to grant them, particularly if the offending trade mark can be removed or obliterated, leaving the goods otherwise intact.

The defendant has the right to appeal against whatever form of relief has been ordered by the court. (As we do not discuss this now, please make a note to talk to your trainer about it when you have finished this Module.)

Next, we will talk about briefing counsel.

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Briefing Counsel

Except where he or she is a trade mark litigator, a trade mark attorney has no right of audience in the High Court, nor (strictly) the right to instruct Counsel in proceedings commenced in the High Court. Only solicitors, who are “Officers of the Court”, may do so. While as we said, you cannot, without the relevant litigator qualification, instruct Counsel to appear in an infringement action, it is certainly entirely proper and customary for you to request Counsel’s opinion in a possible infringement matter, and then instruct solicitors to act. You will also certainly need to know how to go about briefing Counsel in all sorts of matters. For example, you might brief Counsel to act before the Registrar in contested oppositions, or even in complex prosecution of applications.

Terminology & Procedure “Counsel” are barristers. They are independent Officers of the Court, whose first duty is to the impartial and fair administration of justice. Barristers are obliged to take any case that comes along, provided fees can be agreed. This is commonly known as the “cab rank principle”. It is supposed to ensure that no party to litigation is ever without professional representation. Barristers are all self-employed. However, most gather themselves together into “Chambers” for administrative convenience. It is incorrect to refer to these as “firms”. Chambers are a grouping of independent barristers who have chosen to defray the costs of premises and support staff amongst themselves.

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The Clerk The most important member of this support staff is called the “Clerk to the Chambers”. Despite the old-fashioned title, the clerk is a highly skilled professional manager.

Making first contact When you “brief Counsel” your first contact is always with the Clerk. You normally telephone him, giving a short outline of the matter on which you wish to instruct Counsel. This is to enable him or her to check whether there is any conflict of interest in accepting your instructions. He or she will also check whether Counsel would be available in the timescale you need. He or she may know of a similar case to yours, and recommend which of the barristers in the Chambers would be most suitable to handle the matter.

Initial discussion You agree a timescale with the Clerk to submit your “Instructions to Counsel”. These are the detailed instructions on the matter in hand and set out the questions you want Counsel to advise upon. We look at these in more detail shortly. It is usual to request a “Conference with Counsel” to discuss the matter, but be aware that having both increases costs, and one or the other may not be necessary. You may also want Counsel’s “Written Opinion” – again, this should be set up in advance with the Clerk.

Warning Bearing in mind that barristers spend a great deal of time in Court, and more time mastering their briefs and advising clients, you will understand that many are reluctant to spend time doing Written Opinion work.

Instructions to Counsel Next, you will see actual Instructions to Counsel (obviously with details changed) which were drafted in a Trade Mark Opposition.

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In the matter of: Application No 2051220 “CRA MONOGRAM DEVICE” and Opposition Thereto No 45782

INSTRUCTIONS TO COUNSEL TO APPEAR AND TO ADVISE

Boris & Bell 5 Cider Row London EC4A 2BB

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Introduction Boris & Bell act on behalf of the Chartered Research Association (“ The CRA”, “The Association”). The Association has lodged opposition to the following UK Trade Mark application: Application No 2051220 “CRA MONOGRAM DEVICE” Opposition Thereto No 45782

Counsel is requested to advise broadly on the merits of opposition as outlined herein and to represent the Opponents at an Interlocutory hearing (date yet to be assigned), to advise on the evidence and to represent the Opponents at the Hearing on the Opposition date (yet to be assigned), further to which documents are attached and numbered as follows: Official Correspondence 1. Correspondence between Boris & Bell and the Trade Marks Registry Agents Correspondence 2. Copy correspondence between Messrs Boris & Bell and Messrs Irving & Howard, Agents for the Applicants Evidence Lodged in Support of the Application 3. Copy Affidavit and Exhibits of Mr James Wheat 28/1/00 4. Copy Affidavit and Exhibits of Mr Eric Gardner 5/2/00 Evidence Lodged in Support of the Oppositions 5. Copy Affidavit and Exhibits of Mrs Louise Jane McLynn 3/12/99 6. Copy Affidavit and Exhibits of Ms Sarah Eloise Solomon 4/11/00 7. Copy Affidavit and Exhibits of Mr Adam Arthur Neville 10/11/00

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Miscellaneous Papers 8. Copy Registration Certificates 9. Copy Report of Compu Mark 23/5/00 10. Copy Report of Waterlow 24/11/00 11. Copy brochure 12. Copy Note on Evidence Background The Chartered Research Association are long standing clients of Boris & Bell, the instructing agents. The CRA is the professional and educational body for the research service sector. The CRA has an extensive trade mark portfolio, principally focussed on its provision of examination services. It is undoubtedly the leading provider in this field as evidenced by the Society of Official Market Research acceptance of the Research Association Qualification Certificate (RAQC) as the benchmark qualification for researchers. Notwithstanding recent adverse publicity surrounding the research industry and a declining membership, the Association remains a respected independent professional body, recognised as the only appropriate assessor of competence in the industry and having the ear of government. The acronym CRA is instantly recognised in the research services sector as the Chartered Research Association. The Association in its present form was founded in 1903 obtaining Chartered Status in 1925. Full details of the history and status of the CRA are contained in Enclosure Number 5 as marked Item 1. The Institute occupies spacious premises, at 1 Hollyberry, adjacent to St Paul’s. The CRA, through its subsidiary CRA Enterprises Ltd, derives substantial income from room letting, banqueting and conference services operated from its own prestigious headquarters. Counsel is specifically referred to the brochure, Enclosure No 14, a copy of which was also annexed to the Affidavits of Mrs McLynn and Ms Solomon. (Enclosures 5 & 6). In common with other professional bodies the CRA produces merchandise, by way of memorabilia for purchase by its members, for example ties & baseball caps. Counsel is referred to Enclosure 5 marked items 2,3 & 4. The ‘take-up’ of these items is larger than one might expect given the unusual structure of the CRA as a Chartered Body. The CRA in fact has a number of local chapters throughout Great Britain and Ireland. These chapters, about 20 in number, each having its own constitution, promote the ideals and qualifications of the CRA in their own geographical region and organise social events all of which promote the corporate image of the CRA.

BLUE Against this background the CRA has zealously protected its core trade mark CRA (Refer Enclosure 8), having reached negotiated settlements with several parties concerning use of the acronym CRA. The Institute is genuinely fearful that use of the mark CRA on everyday work wear, particularly within the research service sector, will detract from the reputation it now enjoys in the corporate merchandise and entertainment sectors. Further, the CRA is equally or indeed more concerned that such use by the Applicants of its core mark CRA will injure its reputation in its core field of activities. In summary, the CRA does not want its trade mark and badge of origin appearing on overalls worn by purveyors of ice cream from ice cream vans. Conscious of these concerns, Boris & Bell have focussed effort in sustaining the Opposition on the basis of Section 5(3) of the Trade marks Act 1994, this on the basis that the applications would damage their clients’ reputation, as people within the research service sector would indeed equate the mark CRA on work wear with the Chartered Research Association and consider such use incompatible with a Chartered Body, and demeaning to the flagship professional organisation of their industry. Counsel is referred to Enclosure Number 15. History of the Present Proceedings The application for the mark specified was filed and published as follows:

“CRA MONOGRAM DEVICE”

Filed

Published

15/1/99

24/7/98

Counsel is referred to Enclosure Number 9. On publication, they came to the attention of the Association, which instructed Boris & Bell to file opposition in respect of this application. Full grounds of opposition were submitted (Refer Enclosure 1 marked item 1) to the effect that the Association’s use of the mark CRA on a wide range of goods and services for a considerable period was such that the mark was exclusively associated with the Association and use by the Applicants of this mark would lead to confusion. Reports obtained, (Refer Enclosure 9), established that the Applicant company, based in the Barbados, had just opened an office in Glasgow, and that it had not previously traded in the UK. Thereafter the Applicants commissioned a full report from a firm of investigators in an effort to establish the nature and extent of use of the mark CRA by the Applicants. Counsel is referred to Enclosure No 12. The agents for the Applicants (“Irving”), lodged a Counter-Statement (item 2 of Enclosure 1), citing that the Applicants’ mark was capable of distinction from that of the Opponents and professing no knowledge on the part of the Applicants of the Institutes marks. At the same time Irving wrote to Boris & Bell indicating that the Applicants wished to resolve the dispute amicably and proposals would be forthcoming. (Enclosure No 2 marked Item 1).

BLUE Settlement negotiations ensued with appropriate extensions of time being granted by the Trade Mark Registry. Boris & Bell wrote to Irving on 29/4/99 (Enclosure 2 Item 2) with the aim of stipulating precisely their clients’ fears regarding the applications which they summarised as a “concern that purveyors of ice cream cones may be wearing overalls, or other clothing bearing the initials CRA in the vicinity of offices and in such places where bona fide members of the CRA are likely to be.” Messrs Irving’s response (Enclosure 2 Item 3) on 2/6/99, upon their obtaining instructions, was that there was no likelihood of confusion, their clients utilising CRA on care labels inside garments. There was no objection to the Association using the trade mark CRA in relation to clothing promoting or advertising the Association. The Opponents indicated (Enclosure 2 item 4) that they were hopeful that settlement might be reached but they sought an undertaking regarding restriction of CRA to care labels and they themselves refused to be constrained on future use of the mark CRA in relation to clothes. The Applicants’ evidence was lodged at the Trade Mark Registry on 5/2/00 consisting in the two affidavits as detailed herein. Counsel is referred to Enclosures 3 & 4. Mr Wheat’s affidavit rehearsed the arguments set out in the Applicants’ counter statement. The affidavit of Mr Gardner bore to illustrate that the Association had no reputation in the mark CRA in “the clothing market” and outlined the Deponent’s endeavours to encounter the mark in Oxford Street and in “fashion and lifestyle magazines”. These publications were referred to at length and professed to be attached as exhibits to the affidavit but no copy of these publications was served on the Opponents’ agents and there ensued lengthy correspondence with the Trade Marks Registry and Irving as to the necessity of their supplying full copies of these magazines which culminated in a ruling from the Trade Marks Registry on 10/12/00 (Enclosure 1 Item 3). This stipulated that the Opponents must be served with copies of all exhibits. The Opponents’ Evidence in Reply was lodged on 10/01/01and focussed exclusively on the level of recognition of the mark CRA in the insurance and financial services industries and the damage to reputation likely to result from use of this mark on corporate work wear. The Opponents’ agents sought to provide evidence in reply to Mr Gardner’s comments that use by the Applicants of the mark CRA would not be injurious to the Opponents’ reputation. To this end, Boris & Bell issued a questionnaire to leading figures in the research sector, the great majority of whom indicated that they would automatically assume that overalls bearing the mark CRA, originated from the Chartered Research Association. Counsel is referred to Enclosure 6. Further a report was commissioned from Mrs Molly Lewis regarding the extent of use of corporate work wear in the insurance and financial services sector. (Refer Enclosure7 item 1 and Enclosure13.) The undoubted perception of the Applicants’ agents was that opposition to the registration of the mark was based upon Section 5(4)(b) of the Trade Marks Act 1994. In fact, the Opponents’ agents had always held that their client’s stronger case lay in the argument, under Section 5(3) of the Act, that

BLUE these registrations would be harmful to the repute of the Association generally. In this they were encouraged by responses to the Questionnaire expressing incredulity at use of the mark CRA on overalls and further affidavits were obtained from notable witnesses. Counsel is referred to Enclosure 7 marked items 1, 2, & 3 The Trade Mark Registry on 25/02/01advised Boris & Bell (Refer Enclosure 1 marked item 4) that the Applicants raised objection to the Evidence in Reply, on the basis that it was not strictly in reply and thus inadmissible. Following prompting from Boris & Bell (Refer Enclosure 1 marked item 5), a copy of the full grounds of the objection to this evidence was forwarded to the Opponents on 1/3/01. Counsel is referred to Enclosure 2 item 5. Essentially the Applicants’ agents argue that evidence lodged in reply to the Applicants’ evidence and in particular, the evidence of the questionnaire and the details of the banqueting services adduced by the Opponents, should have been lodged by them at the outset, in their Evidence in Chief in support of the Opposition. Having submitted the Evidence in Reply on the Opponents’ behalf, on or about 23/03/01, Boris & Bell contacted the Trade Marks Registry to indicate that the Opponents were willing to invoke ADR procedure in the hope of resolving the dispute. (Refer Enclosure 1 marked item 6). An interlocutory hearing has been requested with respect to the issue of the admissibility of the Opponents’ Evidence in Reply. No date has yet been assigned for this hearing. Questions for the Opinion of Counsel Accordingly, Counsel’s advice is sought with respect to two main issues: i.

The admissibility of the Opponents’ Evidence in Reply, and

ii.

The Opponents’ prospects of success generally.

In particular Counsel is requested to advise on the following matters: 1.

Is the Evidence in Reply lodged by the Opponents on 10 January 2001 liable to be struck out as inadmissible on ground that it is not strictly in reply, or on any other ground?

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Would any such order to strike out, apply to the evidence as a whole or only to a part of it, in which event which part?

Counsel’s view is sought as to whether, in light of recent practice notes issued, and following upon implementation of the ‘Woolf reforms’ in civil procedure, the Trade Mark Registry is likely to adopt a less restrictive approach to the admission of evidence, than that anticipated by the objection raised by the Applicants.

Counsel’s opinion is sought on the strengths and weaknesses of the Opponents case. In particular Counsel is requested to comment on the merits of the evidence of Mr Gardner.

In light of the Applicants’ emphasis upon their perception of the Opponents’ “lack of reputation in the clothing field”, and the Opponents concentration upon opposition under section 5(3) of the Trade Marks Act 1994; Counsel is requested to comment specifically upon the relative merits of sustaining opposition to the applications under section 5(3) and section 5(4)(b) of the Act.

Bearing in mind that the Opponents’ primary concern is the application to register CRA and not the monogram device, Counsel is requested to advise on the prospects of success of the Opposition proceedings in respect of each of the three distinct applications.

Further, Counsel is requested to consider the prospects of success in each opposition, a.

in the event that the Opponents’ Evidence in Reply is excluded, and

in the event that the Opponents’ Evidence in Reply is held admissible

Counsel’s opinion is sought as to whether any settlement proposals not already canvassed, would preserve the Opponents’ position with respect to future use of the mark CRA, whilst allowing the Applicants to use the mark CRA in a manner which does not damage the Opponents’ interests.

Counsel is requested to advise as to whether it would be to the Opponents’ advantage at the Hearing on Evidence to refer to their offer to submit to ADR procedure, and whether any adverse inference is likely to be drawn from the Applicants’ refusal to consider ADR referral.

10. Finally, Counsel’s advice is sought on the further handling of the Opponents case before the Registry and whether any further steps should be taken on the Opponents behalf. In particular, Counsel is requested to consider whether it is possible and/or advisable for the Opponents to lodge any further special evidence at this stage in the proceedings. 11. Counsel is requested to advise on all pertinent matters whether encompassed within these instructions or not.

Boris & Bell

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There are some important points here for you to note about instructing Counsel.

Instructions must “tell the story”. They must set things out in a way that is easy for Counsel to pick up.

All enclosures, annexes, additional papers etc which are referred to must be clearly, sequentially identified & accompany the instructions; preferably an arch lever file, with numbered (or lettered) tabs corresponding to the numbers referred to.

You should assume you must give Counsel everything you have. It is not up to you to assess whether something is pertinent. You are paying Counsel (or your client is) to take an independent view.

Your questions are the matters on which you want Counsel’s Opinion. You should not limit these – Counsel may have a view on something that has not even occurred to you. That is the principal reason for the final “catch all” question to advise on anything not encompassed above!

We will look next at an example of a claims letter.

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The Claims Letter

As discussed, a claims letter (previously called a “letter before action”) should not be sent without very careful thought. Indeed, many firms of patent and trade mark attorneys do not send claims letters at all. Make a note to talk to your trainer about this when you have finished this Module.

You must also be very careful about sending anything that amounts to a threat.

Here is an example of a claims letter.

The Company Secretary Deus Ex Machina Software Limited 2a St Peter’s House 52 – 54 St Agnes Street LONDON WC1S 6ST

1 July 2000

Our ref: M3098 AAN/FK Dear Sirs Re:

Claims Letter Our Client: Zeus Accounting Software

We act for Zeus Accounting Software of 1 Bleak House, Canary Wharf, London E14 4HJ. In the latter part of 1994 and early 1995, our clients adopted and started using the trade mark DEUS EX MACHINA. The trade mark is used in respect of software for accounting purposes, ledgers, auditing and stock control. In particular it is adapted for any business with stock control applications. We enclose herewith information showing the use that our clients have made of the trade mark DEUS EX MACHINA Moreover, our clients are proprietors of UK trade mark registration number 1433267 of the trade mark DEUS EX MACHINA registered in respect of “computer software; all included in Class 9” having a base date 25 July 1995. The registration was renewed on 25 July 2005 and accordingly remains validly in force. We attach herewith copy of the up dated details of the above registration downloaded from the Intellectual Property Office database. Our clients have become aware that you have deusexmachina.co.uk and deusexmachina.com.

registered the

domain names

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Our clients have evidence of confusion between your activities under the above domain names and those of our clients, namely that persons contacting Zeus Accounting Software have asked about the services offered by your company. Our clients are of the belief that should you use the sign DEUS EX MACHINA whether alone or in combination with the descriptive word “software” or your company name Deus Ex Machina Software Limited in respect of the sale of software in the United Kingdom, such use would infringe the rights of Zeus Accounting Software under the above listed trade mark registration. At this stage of our enquiries, on the basis of the information and documents currently available to us, our clients’ belief of infringement results from the following assessment. The sign DEUS EX MACHINA, whether used alone or in combination with DEUS EX MACHINA SOFTWARE, as shown on your domain name, is phonetically and visually identical to the trade mark DEUS EX MACHINA which is the subject of UK trade mark registration number 1433267 registered by our clients in respect of “computer software; all included in Class 9”, and the goods “software” are either identical to or confusingly similar to the goods of the above registration as evidenced by the fact that confusion is already occurring amongst the public. At this stage of our enquiries, we would expect all of the information referred to you to be relevant in this matter. WE THEREFORE PUT YOU ON NOTICE that our clients will have to consider their position with regard to infringement and may bring proceedings against you without further notice to you in the event that this matter is not settled within 21 days of the date of this letter according to the proposals which we are making to you in our accompanying “without prejudice” letter being sent to you today. You are requested to acknowledge receipt of this Notice. Yours faithfully,

BORIS & BELL

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Points to note

You must clearly set out the rights you claim, and must provide proof of the existence of them, normally in the form of a download from the Intellectual Property Office database. You must clearly set out the facts on which you rely in making your claim, and provide at least outline evidence of these facts. You must clearly set out what you want the other side to do.

“Open” and “Without Prejudice” Letters The general principle of the “without prejudice” rule is that it permits negotiations to be carried on between parties which are treated as confidential to them and may not be referred to in any subsequent Court proceedings. However, it is no good marking a letter “without prejudice” if it is not a genuine negotiating letter. “Open” correspondence (like the above letter) may be produced in Court. However, it is generally not quite that simple, as you may recall from reading the section on “Threats”, in the Trade Mark Handbook. We recommend you discuss the “without prejudice” rule with your trainer, as it is not particularly straightforward. At this stage in your training, you should certainly never consider sending a claims letter without checking it with your trainer or appropriate senior colleague, whether in open correspondence or “without prejudice”.

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The Civil Procedure Rules, 1999 (and later amendments)

Following the Access to Justice report by Lord Woolf, one of the most exhaustive reforms of the civil justice system ever seen was implemented on 26 April 1999, when the new Civil Procedure Rules (CPR) came into operation. (These do not apply to Scotland.)

You have already seen (in the Black Module) how the CPR affected the Intellectual Property Office’s role as a Tribunal, and practice before the Trade Marks Registry The CPR dramatically changed the way civil litigation is conducted and applies to all litigation outstanding at 26 April 1999 and everything commenced afterwards. They were revised and renumbered from1 April 2003.

The CPR are in numbered parts. Under CPR part 63, proceedings brought under the Trade Marks Act 1994 have their own “Practice Direction”.

This Practice Direction largely relates to patents, but it has five paragraphs relating to trade marks. Practice Direction 63.13(2) assigns trade mark proceedings to the Chancery Division of the High Court. (Passing off proceedings remain assigned to the general list in the Chancery Division.)

Please now read paragraphs 121-014 to 121-017 of the Trade Mark Handbook entitled “Introduction to the Civil Procedures Rules (CPR).

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Now please note down your answers to the following questions.

What is the “overriding objective” of the CPR?

How does the court do this?

Who has a duty to further the overriding objective?

What are the two main, practical, effects of the CPR on litigation?

Check your answers

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The answers. 1.

To enable the court to deal with cases justly

By Ensuring the parties are on an equal footing Saving expense Dealing with the case in a manner which is proportionate Ensuring it is dealt with expeditiously & fairly

The courts and the parties to the proceedings

4. There is a fundamental transfer in responsibility for the management of litigation from litigants and their legal advisers to the courts Much of the work on an action must be done at an early stage, which results in significant fees being incurred at the beginning of a case

Civil proceedings relating to trade marks

Please spend a little time reading paragraph 121-037 of the Trade Mark Handbook now. At this stage, you need only an outline awareness of this area.

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You are almost at the end of this Module.

As always, this is the point where you should pause to review what you have learnt, and make a note of any subject you would like to learn more about.

Then move on the quiz to see how much you can remember.

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Test yourself

What, in the words of the Trade Marks Act 1994, are the rights conferred by a UK trade mark registration?

How does the Trade Marks Act 1994 define trade mark infringement?

Can one UK registered trade mark infringe another?

What does “comparative advertising” mean?

When talking about instructing counsel, we gave you a summary of points to bear in mind when you are drafting your instructions. Please list as many as you can remember.

When talking about claims letters, we again gave you a list of points to bear in mind. Please list as many as you can remember.

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The answers 1.

“The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent”.

“A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.” Section 10(1) “A person infringes a registered trade mark if he uses in the course of trade a sign where because – (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.” Section 10(2)

No.

Instructions must set things out in a way that is easy for Counsel to pick up. All enclosures, annexes, additional papers etc which are referred to must be clearly, sequentially identified and accompany the instructions. You should give Counsel everything you have. Your questions are the matters on which you want Counsel’s Opinion. You should not limit these – Counsel may have a view on something that has not even occurred to you. That is the principal reason for the final “catch all” question to advise on anything not encompassed above!

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RUST MODULE

Counterfeiting and Parallel Imports

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In this Module we look (in outline) at situations where the owners of trade marks have to deal with unauthorised use of their marks. We talk about parallel imports, “grey goods” and anti-counterfeiting measures, as well as the roles of trading standards officers and HM Revenue & Customs.

You should have worked through the Blue Module, which deals with infringement, before you start this Module. To complete this Module, you need The Trade Marks Act 1994 Council Regulations 1383/2003 The Trade Mark Handbook (chapters 120 and 126) Internet access. When you have completed this Module, you will have listed possible courses of action where parallel imports are occurring; read sections 92 and 93 of the Trade Marks Act 1994; and identified areas where counterfeit goods may be sold.

You will need about one day to complete this Module.

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There are a number of reasons why clients may come to you for assistance when they find that people are using their trade marks without authorisation. We look at infringement, and how to deal with that, in the Blue Module. In this Module, we discuss some specific areas that are of increasing concern to manufacturers.

The goods that are involved may be: the genuine goods manufactured by your clients, but sold in circumstances which the owners of the marks regard as unauthorised; or counterfeit goods.

Genuine goods These can generally be divided into: parallel imports; and over-runs.

Counterfeit goods These can generally be divided into counterfeit goods; copy, or “knock-off” goods; or look-alike goods.

The advice you give, and the actions your clients need to take – or are able to take – will depend on what the goods are, and in some cases, where they come from.

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Parallel imports

These occur where goods are manufactured, and placed on the market with the consent of the trade mark owner, who has rights in the trade mark in more than one territory. The goods are sold more cheaply in some countries than others, and may be brought, by persons other than the owner of the trade mark rights, from a territory where they are sold cheaply, into an area where they are more expensive – and then sold at a price which undercuts the local one. So they are genuine goods, bearing the genuine trade mark, placed on the market by the trade mark owner – or with its consent – but the import is without consent of the owner. Common examples are clothing, which is typically cheaper in the USA than in Britain, or pharmaceuticals which are cheaper in Greece than Britain. This is good news from the point of view of the consumer, who can then buy the cheaper goods locally – but bad news for your clients. These are also known as “grey goods”.

What can you do?

Think for a moment about how – or if – your clients can prevent this. Write down your ideas. Then read on.

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What, if anything, your clients can do to prevent this will depend on whether the imports are coming from: the European Community; or elsewhere.

The European Community In the EC, the concept of a single market, with the consequent free movement of goods, is fundamental. From an early date, the ECJ has made judgments intended to prevent people from using trade mark rights (and other intellectual property rights) to divide the market artificially. Thus we have the doctrine of exhaustion of rights. This derives from Articles 28 and 30 of the EC Treaty (formerly Articles 30 and 36 – you will see them referred to like this in older case law). This means that when a trade mark owner places goods on the market, in the European Community, under a mark, this is the extent of the owner’s rights. If someone chooses to buy the goods at low prices in one part of the EC and sell them in another, there is little that the trade mark owner can do. Importers may even re-label the goods, provided that: the re-labelling doesn’t affect the quality of the goods; the trade mark’s reputation – and that of its owner – are not damaged; and the person carrying out the re-labelling tells the owner what they are doing before selling the goods. They might want to do this, for example, if it is customary to sell the product (for example, pharmaceuticals) in different sized packs in different countries.

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This also applies to goods placed on the market elsewhere in the European Economic Area (EEA). (The EEA consists of the 25 Member States of the European Union (EU), together with a few other countries, including Switzerland, Norway and Liechtenstein that are not in the EU. For more details concerning the relationship between the EEA and the EU, please make a note to read chapter 1 of the Community Trade Mark Handbook when you have finished this Module.)

Please read Section 12 of the Trade Marks Act 1994 now.

Parallel imports from elsewhere The Trade Marks Act 1994 doesn’t make provisions for what happens in the case of parallel imports from outside the EU, or EEA.

On the next page, there is an exercise concerning infringement and exports for you to try.

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Infringement This exercise looks at whether UK companies would be able to use rights to prevent infringement to stop imports.

Read the examples below and make notes as to whether you think the UK proprietor would be able to take infringement action or not. Give brief reasons for your answers.

A UK company is a subsidiary of a Japanese one. The UK company is the proprietor of the UK registered trade mark MANGO for computer software. The Japanese parent company imports its own MANGO software into the UK and markets it.

A UK company is a subsidiary of a Swiss one. Both companies manufacture high-quality watches for sale in their own countries under the mark TANT PIS. The watches are expensive and heavily advertised. The UK subsidiary owns the UK trade mark registration of TANT PIS. The Swiss company sells a batch of its substandard watches to a distributor in the Russian Federation, on condition that the substandard watches are sold only in Russia. However, the Russian distributor imports the seconds into the UK and sells them, after putting them into new TANT PIS trade marked boxes.

A UK company is the proprietor of the UK registered trade mark TAICHUNG for cameras. A Taiwanese company, T’ai-Chung Inc, imports and sells T’AI-CHUNG cameras in the UK.

Compare your answers with ours.

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How did you get on? These are our answers. 1.

In this case, the Court would probably hold that, because the imported software was made by the parent company, there is no infringement. In such a situation, it implies consent by the trade mark proprietor. (It is, of course, unlikely that the UK subsidiary would sue the parent company, but the situation could arise if the Japanese company used a separate distributor.)

This situation is more difficult. However, if the Swiss company specified that the watches were for sale only in Russia, and the UK company could demonstrate that the buying public were aware of the characteristics of the expensive TANT PIS watches and that the imports were of a lower standard than the public expected, then an infringement action might succeed. Note that, in this case, although the goods were genuine, neither the Swiss company nor the UK company applied the trade mark to the products sold in the UK.

There is no connection between the two companies, so the UK company should be able to take infringement action.

Well done if your answers were along the right lines. Parallel importing is a complex subject.

Further reading The ECJ has issued numerous complex decisions on these areas. Chapter 126 of the Trade Mark Handbook goes through this complex area in detail, and refers to the case law. Please make a note to read this chapter when you have finished this Module. NB – it is fairly complex, so you may want to discuss it with your trainer.

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Applying different trade marks within Europe

As an example, imagine that Daylight Ltd, proprietor of PRINCESS STARLIGHT dolls, a merchandising tie-in to a popular children's television series, manufactures dolls in the UK and exports some of them to Italy. In Italy, where the television series is not shown, they are sold for the equivalent of £4.50, whereas in the UK, they cost £17, although they are both sold under the same, UK registered PRINCESS STARLIGHT trade mark. An enterprising import/export trader buys a large supply of the cheap dolls in Italy and sells them in the UK for £8 - undercutting Daylight Ltd's price, but still making a comfortable profit.

As you now know, Daylight Ltd has exhausted its rights, and cannot prevent these imports.

However, Daylight Ltd wants to maximise its profits on its PRINCESS STARLIGHT dolls and avoid the problem of parallel imports from Italy being sold at low prices. So it might well be tempted to give the dolls a different trade mark in Italy.

This seems a very bright idea. Can the manufacturer get away with it?

Under European law, the answer is generally no. This tactic is seen as dividing up the market and is contrary to the EC Treaty - in some cases the European courts have held that this type of action constitutes a disguised restriction on trade and is unlawful.

However, if the same product is given different marks in different European markets for a good reason - for example, because the UK name would infringe an earlier Italian trade mark registration - it is acceptable for the same product to have two different marks, which can then be relied on to prevent parallel imports.

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Over-runs

Over-runs occur where goods are produced by people who were authorised initially by the trade mark owner – but where the goods are now, for various reasons, being manufactured without the owner’s consent.

This is most likely to happen where the trade mark owner initially granted a manufacturing licence, but where the conditions of the licence no longer apply, generally because the licence covered only: an agreed period of time, which has now passed; or an agreed quantity of goods, which has now been exceeded.

What can you do?

Under the Trade Marks Act 1994, the answer is comparatively straightforward. As you should remember from the Blue Module, this constitutes infringement, and the proprietor can take action as appropriate.

In most circumstances, if the manufacturing licence was properly drafted, there will also be a breach of contract, and the owner of the right will be able to take civil action for this.

The problems here are likely to be practical ones of identifying the goods – they will look exactly like the goods that were produced with the consent of the trade mark owner. So this may be a situation where you find it hard to advise clients. The best advice may be to try to prevent the situation arising by – if practical – inspecting the manufacturing premises, and its paperwork, regularly, to try to ensure that the manufacturer complies with the conditions of the licence (assuming that the licence gives the owner the right to do this).

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Counterfeit goods

Counterfeit goods are those which are deliberately designed to look exactly like those manufactured by someone else. The person applying the trade mark to counterfeit goods has no relationship with the real owner of the rights in the trade mark.

This constitutes trade mark infringement under section 10 of the Trade Marks Act 1994. We looked at this in detail in the Blue Module, but please refresh your memory by taking another look at it now.

Criminal offences However, the Trade Marks Act 1994 also makes provision for more than just civil action against infringers, in some circumstances. Under section 92, unauthorised use of a trade mark may also be a criminal offence.

Please read this section now, and section 93, then answer the following question. To take successful action under section 92, what do you need to prove? Then see what we have said.

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You must be able to prove that the person who applied the trade mark without the proprietor’s consent intended to: gain something for himself or someone else – in effect, make a profit from his action; or cause a loss to someone. You also need to prove that: the mark is registered in respect of the same goods as those your client is complaining about; and the marks are identical or likely to be confused; and the proprietor has not consented to the use. Note that nowhere in the Act does it say that the person actually intended to deceive anyone.

Defences

Look at section 92(5). A person accused under section 92 may have a defence if they can show that they had reasonable grounds to believe that their use of the mark was not an infringement. This could apply where The marks differed slightly They believed that use of the mark was licensed They believed that the trade mark registration had ceased to have effect They had received professional advice that their use of the mark would not infringe They believed they had bought the goods from a reputable source and believed them to be genuine – perhaps that they were parallel imports.

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Burden of proof The accused person must prove that the public were not likely to be deceived – the burden of proof here does not rest on the prosecution. The exception to this is where the trade mark owner is claiming a reputation in the goods – then the owner will have to prove that the mark has the claimed reputation, and the unauthorised use would take unfair advantage of it, or be detrimental to it.

Risk to the consumer There are real risks associated with counterfeit goods – not just those of financial loss to the trade mark owner. Counterfeits are often substandard and in many cases can be dangerous to people buying them. This is a particular problem where Pharmaceutical products Machinery parts Car parts Aircraft parts Toys are involved.

Please spend a few minutes making a list of where and how counterfeit goods may be sold to the public. Then compare it with our list.

RUST Counterfeit goods are often sold: In street markets In Sunday markets At car boot sales By door-to-door sales As “bankrupt stock” As “fire sales”. Seeing any of your clients’ trade marks applied to goods sold by these means – or through conventional outlets, but at abnormally low prices – should alert you to the fact that there is likely to be something wrong, and you should inform your clients immediately.

Other types of fake You may have remembered that we referred earlier to two closely-related categories of goods Copy, or “knock-off” goods – which are intended to look like the genuine goods, but are sold as copies, rather than pretending to be the genuine product Look-alike goods – which look somewhat like the genuine goods, but are not designed to be identical. What action your clients would be able to take against these will depend entirely on the circumstances – it will depend on how closely the goods are designed to resemble the originals and how close any trade marks applied are to those which are registered. (And don’t forget that other aspects of intellectual property law may apply in these cases – copyright and registered designs may also be infringed.)

Other courses of action There may be courses of action that your clients can take that do not depend on the Trade Marks Act 1994, and we look at some of these next.

RUST Trade Descriptions Act 1968 This protects not just the rights of trade mark owners, but also the rights of consumers. Much of it is outside the scope of this Manual, so we will look at it only very briefly here. Under the Trade Descriptions Act 1968, a trade mark may qualify as a trade description, at least under some circumstances. To fall foul of the Trade Descriptions Act 1968, the trade description in question must be false “to a material degree”. The whole description of the goods – which will include all the labels and so on that are visible – is looked at to see if the description in question is false to such a degree. The Trade Descriptions Act 1968 also applies to false descriptions of services

There is a helpful guide to the Act at www.dti.gov.uk/files/file8156.pdf. Please read it now. Disclaimers People sometimes use “disclaimers” to try to avoid being caught by this Act – an example is the word “Fake” or “Replica” applied to the goods. For a disclaimer to be effective, it must be: as prominent as the description; and drawn to the attention of buyers. Merely telling people that the goods are fakes is not an effective disclaimer. And even then, this may not be enough. In a case involving replica scarves, the Arsenal Football Club was able to stop a small trader from using its trade marks without authorisation, despite the fact that the trader had been trading for many years, and made it clear that the scarves were unauthorised. Who can be prosecuted? Anyone who has committed an offence under this Act in the course of business or trade may be prosecuted. This includes employees and company directors, as well as the more stereotyped culprit of the local market trader – and they can be prosecuted where the offence was due to neglect on their part, as well as in circumstances where they acted deliberately.

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Trading standards officers

Local authorities have a duty to enforce both section 93 of the Trade Marks Act 1994 and the Trade Descriptions Act 1968. This work is done by trading standards departments. Trading standards officers have powers to Enter premises Inspect goods and documents Seize goods and documents Make test purchases. Subject to the provisions of the Police and Criminal Evidence Act 1984, they do not, under some circumstances, need a warrant, but must produce credentials. (Make a note to talk to your trainer about the relevant circumstances.) They can also apply to a justice of the peace for a warrant if they are refused permission to enter premises and have reason to believe that an offence has been committed there, or that there is evidence of an offence on those premises. They may go anywhere in the course of an investigation that has been committed in the area for which their local authority has responsibility.

The police Trading standards officers do not have powers of arrest – if arrests are needed, they will work with the police. The police may also bring prosecutions under the Trade Descriptions Act 1968.

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European anti-counterfeiting legislation European legislation also provides for anti-counterfeiting measures.

You should have with you a copy of Council Regulation 1383/2003. Please read it now. The Regulation is designed to help ensure that people can take action when goods are brought in from outside the EC. Owners of trade mark rights, including registrations, in Member States have the right to apply to prevent counterfeit or pirated goods from entering the EC. Note that this Regulation does not apply to parallel imports. It also applies to owners of rights deriving from the ownership of patents, copyright, or registered designs. In the UK, you can apply to HM Revenue & Customs, to prevent the importation of counterfeit goods. You must give: a detailed description of the goods; proof of existence of the rights that you are claiming, and of ownership – for example, a copy of the trade mark registration; proof of the identity of the person applying (your client); and proof of your authority to act. It will also make matters easier if you give: details of where you expect the import to occur; the name of the importer; and your client’s VAT registration number.

RUST Community trade marks If Customs in one Member State accept an application, where a CTM is involved, then it will be effective in all Member States for the next year, and can be forwarded to other states.

Indemnity You need to indemnify Customs against costs of storage, legal expenses and a successful claim by the person from whom the goods are seized.

What happens if your client hasn’t made an application? If Customs discover what appear to be counterfeit goods, they can detain the goods for up to three working days only, to give them time to try to notify the owner of the trade mark rights and allow the owner to make an application. They usually look at the Trade Marks Register and telephone the agent (you). You must respond within the three working days.

Detaining the goods If Customs seize goods covered by an application, they will firstly notify: the person who has declared the import; and the person who has made the application. They, along with, normally, the carrier, will be allowed to inspect the goods. The trade mark owner must then confirm whether the seized goods are counterfeit or pirated within ten working days of the date they are notified by Customs. If the owner has not done this, Customs will release the goods, and the owner may have to pay compensation to the person from whom they were seized. The importer may dispute that the goods are counterfeit or pirated within one month of the date of seizure. If goods are found to be pirated or counterfeit, Customs will seize them, and they can be destroyed.

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Now take a look at sections 89 and 90 of the Trade Marks Act 1994. These provisions are rarely used, because of the difficulty of providing the information that is needed.

Now please read chapter 120 of the Trade Mark Handbook, for more details on Customs procedures and counterfeiting offences.

You are almost at the end of this Module. As you will have realised, the topics we have looked at here are complex ones, with wide-ranging implications, and we have only touched briefly on many aspects. We recommend that you read widely on the subject (we have suggested some further reading to your trainer) and that you be aware that the law in many of these areas (particularly with regard to parallel imports) is developing constantly. So you need to ensure that you keep up to date with current developments. As usual, review what you have learnt now, and make any notes that you would like to refer to later.

Then try the quiz.

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Test yourself

From which Articles of the EC Treaty do we derive the doctrine of exhaustion of rights?

Under what conditions may people making parallel imports within the EEA re-label goods?

Is it permissible to apply different trade marks to the same goods, in different parts of the EC?

Under which section of the Trade Marks Act 1994 may it be an offence to make unauthorised use of a trade mark?

List possible defences to an accusation under section 92 of the Trade Marks Act 1994.

Now see how you got on.

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The answers 1.

Articles 28 and 30 of the EC Treaty.

On condition that The re-labelling doesn’t affect the quality of the goods The trade mark’s reputation – and that of its owner – are not damaged The person carrying out the re-labelling tells the owner what they are doing before selling the goods.

No – this would divide the market – unless there are valid reasons for doing so. Valid reasons would include for example, the fact that a mark was infringing in one country but not another, or was precluded from registration in one country because its meaning was obscene in the local language.

Section 92.

A person accused under section 92 may have a defence if they can show that they had reasonable grounds to believe that their use of the mark was not an infringement – including for example, that: The marks differed slightly. They believed that use of the mark was licensed. They believed that the trade mark registration had ceased to have effect. They had received professional advice that their use of the mark would not infringe. They believed they had bought the goods from a reputable source and believed them to be genuine – perhaps that they were parallel imports.

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PINK MODULE Loss of Trade Mark Rights

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In this Module, we look at how the rights of proprietors of registered trade marks may be endangered, and what can be done to prevent this.

To complete this Module, you will need Internet access The Trade Marks Act 1994 The Trade Marks Rules 2000 The Trade Marks (Amendment) Rules 2004 Tribunal Practice Notice (TPN 4/2000) at www.ipo.gov.uk/patent/p-decisionmaking/ p-law/p-law-tpn/p-law-tpn-2000/p-law-tpn-2000-tpn42000.htm Tribunal Practice Notice (TPN 1/2005) at www.ipo.gov.uk/patent/p-decisionmaking/ p-law/p-law-tpn/p-law-tpn-2005/p-law-tpn-2005-tpn12005.htm Trade Marks Registry Work Manual MAGIC BALL trade mark [2000] RPC 12

When you have completed this Module, you will have Listed the reasons why rights in a registered trade mark may be endangered Identified the difference between the consequences of revocation and invalidity Stated who may apply for revocation and declarations of invalidity Listed ways of preventing a trade mark from becoming a generic term.

This Module will take approximately two days to complete.

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As you’ve been working through other Modules, you’ve seen that we’ve sometimes referred to endangering, challenging and cancelling rights in a registered trade mark.

Think about what you’ve learned and read, both in this Manual and as background reading - as well as any discussions you've had with your trainer or colleagues. Then, make a list of all the reasons you can think of as to how someone might endanger - or lose - their rights in a registered mark.

Then compare your list with ours.

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We thought of the following reasons the registered mark has not been used for a period of five years from the date the mark was entered on the Register, or for a subsequent five year period There was no bona fide intention to use the mark at the date of the application to register it The application was originally made in by someone not entitled to do so the registered mark has become generic The proprietor has not controlled the use of the registered mark by, for example, its licensees The proprietor has done something which has made the registered mark misleading to the public

We'll look at some of these points more detail shortly.

So - what happens if the proprietor of a registered mark has done something to endanger rights in a registered mark?

Someone may apply to have the registration revoked or declared invalid,

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The Trade Marks Act 1994 - Revocation and Invalidity

Sections 45 to 48 of the Trade Marks Act 1994 deal with these. Essentially, these describe different bases for cancelling a registration.

Go to www.ipo.gov.uk/tm/indetail/revocn.htm, and please read the section on revocation that you should find there. Now go to www.ipo.gov.uk/tm/indetail/invalidn.htm and read the information there about invalidation. Please note that the term “cancellation” is used to encompass both revocation and invalidation, although the two differ.

Read sections 45, 46, 47 and 48 of the 1994 Act, then answer the questions on the next page.

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Section 45 provides that a proprietor may voluntarily surrender a trade mark registration. Why might a proprietor want to do this?

Section 45(2)(b) refers to “other persons having a right in the registered trade mark”. Who might be included here?

Which section of this Act provides that it is a ground for revocation if a proprietor has allowed a mark to become generic?

Are there any circumstances where a mark may have become misleading, but where this is not necessarily a ground for revocation?

What is the period of non-use of a trade mark which may constitute grounds for revocation?

Who may apply to revoke a trade mark registration?

As well as being revoked, a registration may be declared invalid. From the point of view of the proprietor of a trade mark registration subject to one of these actions, what might the difference be?

Who may apply for a declaration of invalidity?

Compare your answers with ours.

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Our answers. 1.

A proprietor might surrender a registered trade mark, either wholly or in part, to help someone else obtain a trade mark registration, and avoid having to defend a cancellation action. (A proprietor may ask the other side to pay his or her costs in this case.)

Other people with a right or interest in the registered mark might be Co-proprietors (look at section 23) Licensees Other companies in a group of which the proprietor is a member who are using the mark with consent (You may have thought of some more.)

Section 46(1)(c) provides that a registration may be revoked if the mark has become generic.

Yes - section 46(1)(d) provides that it is a ground for revocation that a mark has become deceptive only if it is “in consequence of the use made of it by the proprietor or with his consent”. It does not provide for revocation where the mark has become misleading due to other circumstances.

The period is five years - section 46(1)(e).

“Any person” may apply for revocation.

If a proprietor's registration is revoked, the rights in the registered mark cease at the date declared by the registrar or court, but are held to have existed prior to that date. But if a registration is declared invalid, the effect is that the proprietor is deemed never to have had any rights in the registered mark.

Again, any person may apply for a declaration of invalidity - not just a “person aggrieved” and not just the owner of a prior right.

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Some points to note

In cases of revocation on the grounds of non-use of a mark, the onus of proof is on the proprietor - the proprietor must be able to show the genuine use that he or she has made of the mark as registered if an action for revocation is to be defended successfully (section 100 Trade Marks Act 1994 (as amended). We will discuss use, non-use and token use shortly.

Look again at the grounds for revocation listed in section 46. As you can see, this means that there is a continuing need for your clients to monitor and control the use of their trade marks if they wish to maintain their registered rights. (We look at trade mark licences and recording them in the Gold Module.)

Section 48, on the effect of acquiescence, only applies where the proprietor of the earlier right has acquiesced in the use of a registered mark. It does not apply where the proprietor has acquiesced in the use of an unregistered mark. (Nevertheless, you should warn clients that it is dangerous to acquiesce in the use of an unregistered mark. If your clients do not take action to prevent use of an infringing trade mark they could find, later, when they do need to try to stop use of the mark, that any delay for which there is no good reason could count against them.)

A trade mark can be saved where use is recommenced, before any revocation action, after the five year period. However, use in the three months before the revocation action will not count to save the application unless the proprietor began preparing to resume use without being aware of a potential revocation action. This means that if the proprietor begins to use the mark only because, for example, he or she received a properly filed application for revocation of his or her registration, or because revocation was threatened in a dispute and a revocation action was started within three months, the use will not count to save the mark.

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Use, token use and genuine reasons for non-use

It is fundamental to trade mark law that the mark is used. As is often said, a trade mark is, simply, a mark which is used in trade.

Unfortunately, trade mark proprietors frequently seem to forget or try to ignore this.

What happens if you find out that the trade mark owner has made use of the registered mark - but on a very small scale?

Section 46(1)(a) of the Act says that any use must be genuine. So if the owner of the mark has only used the mark on a token basis, perhaps in the hope of preventing other people from attacking the registration, the use may not in fact be sufficient to stop the mark being expunged from the Register, because it is not genuine in the commercial sense.

Registering a mark similar to a mark actually being used, simply to hinder one's competitors, is never likely to be a good idea. There are relatively few decided cases on this subject. But in one 1938 Act case, the “ghost” mark NERIT was registered by the owners of the unregistrable mark MERIT to protect the latter mark. When the owners tried to enforce rights in the NERIT registration against other people who wanted to use MERIT, the defendants counterclaimed that the NERIT registration should be expunged. The defendants won, despite sales of NERIT trade marked goods (cigarettes) by the proprietor because the use was solely designed to protect the registration from attack and was not a genuine commercial use. (Imperial Group v Philip Morris [1982] FSR 72.) Under the 1994 Act, the registration of NERIT might arguably be considered to have been made in bad faith, contrary to section 3(6).

The individual circumstances of the use should always be considered. In some cases, a relatively low level of sales will still be genuine, rather than token use. The courts will take into account the nature of the products being sold, and the effort put into marketing them under the mark, proportionate to the total business of the proprietor.

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For example, if the goods are nuclear power stations, sales of even one such item under the mark may be held to be genuine use, because the per-unit cost is so high. If the trade mark owner is a small company based in Cornwall, the fact that it has not sold in Scotland may not count against it if it can show that it has made a real effort to sell its goods in Cornwall, Devon and Somerset. But in this case, bearing in mind that a registration grants a national right, a third party might be justified in seeking to restrict the scope of the Cornish company’s registration to the counties where he has actually sold products.

There are also circumstances where there are entirely proper reasons for non-use.

Please now read the MAGIC BALL Trade Mark case [2000] RPC No. 12. This considers the wording of section 46(1) of the Trade Marks Act 1994, and in particular what is meant by the words “proper reasons for non-use”. You will see that in this case, genuine production difficulties which were outside the control of the proprietor were held to be “proper reasons”.

Date from which revocation takes effect It can be important to cancel an earlier registration with effect from a particular date, for example If that registration is being used in an infringement action against you, you would want to cancel it with effect from the day before the infringement action was launched, so that you do not have to pay damages to the other side If the earlier registration has been cited under section 5 Trade Marks Act 1994 against your application, you want if possible to cancel it with effect from the day before you made your application, so that the citation does not apply.

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Please read section 45(1)(a) and section 46(1)(b) of the Trade Marks Act 1994 (as amended), and if you wish, make a note to discuss it with your trainer when you have completed this Module. Calculating the non-use period in revocation actions You should note that the period of five years’ non-use necessary to found a revocation action is continuous. If there has been any genuine use of the mark at any time during that period the registration is unlikely to be vulnerable to attack on the grounds of non-use. However, the trade mark owner needs to prove use of the mark.

V You have seen that the period of non-use is five years. But from when does this period run? There's no need to write anything down, but think for a minute before reading on. In general, a registration dates back to the day it was filed - it does not date from the day it actually became registered. This applies for most purposes, including infringement rights. But in revocation proceedings a “registered trade mark” is a mark that is actually on the Register. The calculation date for non-use thus runs from the day the mark was placed on the Register. So the period of non-use under section 45(1)(a) dates from the day the mark actually became registered - not the date the application was filed - and the two dates can be some years apart. This point was established in a case known as BON MATIN ([1988] RPC 553) under the 1938 Act and clarified in the Trade Marks Act 1994. Since this case, the date the mark was registered has been entered on each Registration Certificate, to assist in calculating the non-use period. There is no need to read this case now, but you may wish to read it later and discuss it with your trainer.

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Important Under section 45(1)(b) of the Trade Marks Act 1994, the five-year period of non-use can be any continuous five-year period, provided that this post-dates the registration date. Example The mark BOUDOIR is registered under no. 1 303 100. The application date is 6 July 1987 and the registration date is 11 November 1989. In 2006, your client wished to cancel registration no. 1 303 100, on grounds of non-use. Under section 45(1)(a), they could claim non-use starting 11 November 1989. They know that Boudoir Ltd (the owner of the registration) went into receivership and according to the Companies Registry, Boudoir Ltd was struck off on 4 March 1996. It is better and easier to claim non-use under section 45(1)(b) for the five-year period starting from5 March 1996, in this instance.

Why apply for revocation or a declaration of invalidity? Think back over what you have learnt so far, in other Modules, from any background reading you've done and from discussions.

Make a list of any reasons you can think of why clients of yours might want to remove a trade mark registration from the Register, or alter one, assuming that the registration does not belong to your clients. When you've finished your list, look at ours.

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Your clients might want to remove or alter a registration because They want to use a mark that might infringe it It has been cited under section 5 as a barrier to your clients' application Someone else has registered a mark in which your clients have an earlier right One of your clients’ licensees or distributors has registered your clients’ trade mark without their authority

You might also advise your clients to threaten a cancellation action in, for example, a dispute over one of your clients' trade marks where someone is opposing your clients’ application or threatening to take infringement action on the basis of one of their registered marks. It can be a useful tactical measure, if the other side's mark is vulnerable.

You should have a copy of the Trade Marks Rules 2000, as amended by the 2004 Rules with you. Turn to Rules 13-15 governing revocation, invalidity and rectification and read them now

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Now please turn to the Trade Marks Registry Work Manual, chapter 7, and read sections 3.2 and 3.3. Then answer the following questions. 1.

From what date does revocation take effect?

Does revocation have to cover all the goods or services covered by the registration?

How do you apply for revocation?

How long does the trade mark proprietor have to file their defence?

What must the trade mark proprietor file?

What happens if the proprietor doesn’t file a defence?

What happens when the “evidential rounds” are complete?

What form should you use for filing for revocation on grounds other than non-use?

Now check your answers.

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Compare your answers with ours.

If the application is made under section 46(1)(a), the date is the date of registration. If the application is under section 46(1)(b), then the date is either the date of application for revocation, or an intermediate date (which might be chosen to be just prior to the date of the applicant’s own application, which is blocked by the registration. You can plead all three (but no more than three) in the same application for revocation.

No.

You should use Form TM26(N), including the statement of grounds and the fee.

Three months from the date when the Trade Marks Registry sends the form TM26(N).

Form TM8, incorporating the counter-statement and either two copies of evidence of use made of the mark – this evidence does not have to be the proprietor’s full evidence as they have an opportunity to file this later, but must be sufficient to establish an arguable case that there has been use or reasons for non-use of the mark.

The registrar writes to the parties, giving them a period of 14 days within which either to request a hearing or to provide a submission stating why discretion should be exercised in these proceedings.

The Principal Hearing Officer will review the case and decide whether there should be a hearing. (We discuss evidential rounds later on.)

Form TM 26(O) – with statement of grounds, and the fee.

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Application for a Declaration of Invalidity

Now please read section 3.4 (Application for Declaration of Invalidity), then answer the questions below.

Which form do you file to request a declaration of invalidity?

If you are basing your application on a registered mark, what details must you give?

If the trade mark owner does not file a defence in the time allowed, the Registrar does not automatically declare the mark invalid. Why is this?

If the Registry decides that the matter can be decided without a hearing, can you still request one?

Now check your answers.

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Here are the answers.

Form 26(I) (with statement of grounds, and don’t forget the fee).

A representation of the trade mark and details of where the mark is registered the registry in which the mark is registered the registration number of the mark the classes in respect of which the earlier mark is registered the goods and services for which that mark is registered the statement of use, where necessary.

Because there is a statutory presumption of validity under section 72 of the Act. This does not apply with cases of revocation for non-use. The applicant does need to make at least a prima facie case for an invalidation, so the case has to move to the evidential rounds.

Yes. The parties have a right to be heard.

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More about the Trade Marks Registry’s approach We have already looked at the Work Manual.

Now please re-read Tribunal Practice Notice (TPN 4/2000), 4 October 2000. (We have looked at this in the Black Module.) You will see that the practice concerning scrutiny of statements of case and counter-statements applies equally to revocation proceedings.

Defending an action for revocation or declaration of invalidity

Your client has just received a copy from the Trade Marks Registry of Form TM26(N) and statement of case in support of the revocation. This has been filed by a third party to remove one of your client’s registrations from the Register. Write down all the points you can think of that you might need to consider in these circumstances and all the actions that you or your client might take. Then look at our notes.

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The actions you take will clearly depend on the circumstances. But consider What are the grounds on which the other person is relying? the grounds of revocation are included at the outset of the action. So some of them may be easily disproved, while you may have more serious problems with others. Can you disprove any of the grounds on which action is threatened? You may be able to show that your client has always taken steps. for example, to control the use made by licensees or to prevent the mark from becoming generic. Is revocation made on the ground of non-use? Has your client used the mark in the last five years (or the five year period or periods alleged in the revocation)? Can your client prove this? Ask for copies of dated trade literature, letter headings, invoices, orders - or anything else that might show the mark in use. If your client hasn't used the mark, is there a good reason why not? In some cases, for example, it has been held that war is an acceptable reason for not using a trade mark. Your client may not have been able to obtain the parts needed to produce the goods for which the mark is registered if supply lines were disrupted by a war. Why has the other side filed the revocation action? Because your client's registration is standing in the way of their own trade mark application? If your client can disprove the grounds on which they are threatening action, do this - if possible before the action goes any further. Your client could also consider offering to part-cancel their registration voluntarily if the mark is not used on some of the goods and this would help clear the way for the other person's application to achieve registration. Because they have an earlier registration or already use the mark and have just become aware of your client's registration? You may be able to demonstrate that your client has prior use or demonstrate extensive honest concurrent use, or even that they have acquiesced to use of the mark. You could also threaten to revoke a registration of theirs, or to have it declared invalid, as a counter-measure. 19

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Avoiding proceedings

If possible (and your client agrees), you should aim to settle any actions or threatened actions promptly, without going through full revocation or invalidity proceedings. Full revocation proceedings are normally expensive - not only in terms of direct monetary costs. Your client will incur substantial fees for your services, and perhaps a barrister - but you should also advise the client to factor in the real cost of his management time spent on the defence.

There are of course some occasions when clients prefer to litigate! Such cases might be where, for example, the client wishes to drive a competitor from the marketplace.

If you can reach an acceptable compromise, we advise that you should try to do so. And if your client really isn't using the mark, or there is very little chance of disproving the grounds for revocation or a declaration of invalidity, the best advice for your client might be to offer to sell the mark to the person threatening action. Your client could also cancel the registration voluntarily, to keep costs as low as possible.

You will always need to consider the individual circumstances of the case. Don't forget that your advice must not only be legally correct, but must also be the right practical and commercial advice for your client in the circumstances - even though your client won't always want to hear the right advice!

We move on to consider what happens if a trade mark has become generic for a particular product, or is in danger of becoming generic.

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What are generic marks? Under the terms of section 46(c) of the Trade Marks Act 1994, allowing a trade mark to become a common name for the goods or service covered by the registration is a ground for revocation. The section deals with trade marks which have been allowed to become generic - that is, used as a descriptive or substitute word for the product or service, rather than as a trade mark.

Re-read section 46(c) now please.

Some examples of words which were once someone's trade marks, with exclusive rights, but which anyone can now use, include ESCALATOR GRAMOPHONE TRAMPOLINE DRY ICE SHREDDED WHEAT ASPIRIN (which is still a trade mark in Continental Europe).

Important note Section 46(c) applies to generic use by people in the trade. Misuse by the general public does not count to render the mark liable to revocation. The law accepts that trade mark owners cannot hope to control such misuse. 21

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How Does a Mark Become Generic?

Imagine that you have just noticed that your clients are persistently using their trade mark ANTIFECT, registered for antiseptics as the description of their product, instead of the term “antiseptics” in their advertising. Even worse, other manufacturers of antiseptics are referring to the antiseptics they make as “antifects”. Your clients should take action fast. List the actions that you or your clients could take to retrieve the position.

Then look at our list.

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You should Write a letter to the other traders notifying them that ANTIFECT is your client’s trade mark. Your letter should provide details of your client’s registration, and either a copy of the registration certificate, or copy of the electronic details held by the Intellectual Property Office of the mark, goods and proprietor. (The latter may be preferable for older marks because the details will show that the registration is in force, and who the current owner is.) You may wish to state that, unless the other party stops using the mark immediately for goods other than those of your client, and unless they undertake not to use it in the future without your client's permission, your client will take action for infringement and passing off. Important You must be careful that your letter is not seen by the other side as an unjustified threat. (We look at this in the Blue Module.)

Your clients should Always use the trade mark in the form in which it is registered (but a little leeway is allowed if the essential distinctive character of the mark is not affected) Always use the ANTIFECT mark as an adjective - referring to “ANTIFECT antiseptics” for example - never as a noun (“Buy your ANTIFECT antiseptics here” - not “Buy your ANTIFECT here”) nor as a verb (“Use ANTIFECT antiseptics to cleanse your cuts” - not “ANTIFECT your cuts”). They should also make sure that any licensees observe these rules - for example in any publicity material they issue Make the trade mark stand out from the text. You've probably noticed that throughout this Manual, we have shown trade marks in capital letters, to differentiate them from the rest of the text. Your client should always make the first letter at least a capital letter. Your client could also use the mark in italics, or a different typeface or a different colour from the rest of the text to differentiate it Identify ANTIFECT as their registered trade mark. They can use the letters TM to show that it is a trade mark, not just a general term for antiseptics. Since it's registered, they can also use an R in a circle. Or, if they wish, they can put an asterisk by the mark and show, at a convenient point in the text, the words “* ANTIFECT is a registered trade mark of...”. (However, don't let your clients indicate that any unregistered mark is registered – that would be a criminal offence!) 23

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And your client could Run a special advertising campaign - stressing that ANTIFECT is a trade mark for their antiseptics. Some well-known trade marks have been defended successfully like this (for example, the trade mark PERSPEX).

Acquiescence If your client acquiesces to this misuse for an extended period, they risk losing the registration.

Rectification and Correction of the Register Apart from revocation and invalidity actions, the Trade Marks Act 1994 provides for other forms of amendment to the Register. Rectification means to put right something in the Register.

Find section 64 (which deals with rectification) in your copy of the Act, then answer the questions below. Write your answers in the Workbook space provided. 1.

What can you apply to rectify?

Who may apply to rectify?

If the Register is rectified, what is the effect?

Our answers are on the next page.

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Our answers.

You can apply to rectify errors or omissions in the register.

“Any person having a sufficient interest” may apply to rectify. Note that this differs from applications for revocation where any person may apply.

The effect of rectification “is that the error or omission shall be deemed never to have been made”, unless the Registrar or Court rules otherwise.

You probably did not find these questions too difficult!

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You are almost at the end of this Module.

As usual, before moving on to the quiz, make notes of any points to discuss with your trainer when you meet.

Now tackle the quiz.

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Test Yourself

In the case of an application for revocation, on whom is the onus of proof?

Your client is the registered proprietor of the trade mark VISH for dishwashers. You overhear a conversation at the bus-stop between two people who refer to “vishing” the dishes. What action should your client take?

Can a registration be revoked in respect of only some of the goods or services in respect of which it is registered?

To whom are applications for revocation, declarations of invalidity or rectification made?

Check your answers.

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The answers.

The onus is on the proprietor to prove that the mark has been used.

There is no requirement for your client to take action if the only incorrect use is among the general public - the danger is where the trade is using the trade mark as the general word for the product. However, to prevent the incorrect use becoming more widespread, now is a good time for your client to run an advertising campaign to remind people that VISH is its trade mark.

Yes.

You can make applications to the Registrar or the Court - whichever the applicant prefers - unless the trade mark in question is already the subject of proceedings before the Court - in which case that is where the application must be made.

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GOLD MODULE

Licences and their Recordal

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In this Module, we introduce the subject of licensing of trade marks.

To complete this Module, you will need copies of The Trade Marks Act 1994 The Trade Marks Rules 2000 Chapter 6 of the Trade Marks Registry Work Manual at www.ipo.gov.uk/tmmanual-chap6-regmain.pdf Northern & Shell Plc v Condé Nast & National Magazine Distributors Ltd & another RPC [1995] 3 Chapter 117 of the Trade Mark Handbook Form TM50 Form TM51

When you have completed this Module, you will have: Listed the circumstances in which someone other than the owner might be permitted to use a registered trade mark. Identified the sections of the Trade Marks Act 1994 that provide for the licensing of registered trade marks. Stated what is meant by “exclusive licensee”. Identified the differences between an exclusive and non-exclusive licensee. Listed reasons why it is advisable to record licensees at the Trade Marks Registry.

This Module will take approximately one day to complete.

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What is a licence? This section deals with licences. A licence Legitimises acts which would otherwise be infringements Is a name for a particular type of contract. A well-drafted licence gives the licensor double control over the licencee By contract as well as By trade mark law.

You have already discovered that the main function of a trade mark is to distinguish the goods or services of one undertaking from those of others. In the Pink Module, we see how trade mark proprietors can endanger their registered rights by failing to control the use, by others, of their registered mark.

But in practice trade marks are often used by a person other that the registered proprietor.

Please list any circumstances you can think of, when a registered proprietor might allow someone else to use the trade mark. Our list is on the next page.

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A proprietor might permit use of a mark by another person in cases of Franchising - for example, the BODY SHOP chain Licensing between businesses - for example, a mark registered by a proprietor for a wider range of goods or services than they are actually supplying - so another person may be licensed to use the mark for some of the other goods or services; or licensing by sector, where a proprietor trades in one commercial sector such as fire alarms for industrial plants and is willing to let a third party use the mark for domestic fire alarms Merchandising (a type of licensing) - for example, cartoon characters Use by a subsidiary company of a mark owned by the parent company or undertaking.

You may have thought of other circumstances in which use of a mark by others could be permitted. Make a note of them if you want to discuss them with your trainer later on.

You may have written down “Use by a distributor” - or something similar. But does a distributor use a trade mark in the sense that is envisaged by the law?

Look at Section 10 (6) of the Trade Marks Act 1994, and at section 12.

Then read on.

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So – does distribution qualify as “use” of a trade mark?

A distributor normally handles goods to which the proprietor has already applied a trade mark. The same applies to wholesalers or retailers selling other people's goods.

So a mere distributor or retailer is not a trade mark user for our purposes. (However, if they repackage the goods, they are users.)

After all, it would hardly be practical for, say, a manufacturer supplying cans of baked beans to thousands of retail shops to record every shop owner as a user,

Important

However, there is something here which you should note, as it is important for you to discuss it with clients.

Many clients give a “licence agreement” to people who are, in fact, distributors. This sort of agreement should properly be called a “distributorship agreement”. To complicate matters further, some clients grant wider rights – for example, to repackage the goods in another language – to people who are otherwise acting only as distributors.

You should always check this sort of agreement for possible licence terms.

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Master licences This is another commercial aspect that you should be aware of. Some clients grant “Master Licences” to persons or companies in a particular territory, to exploit a branded product or invention. These Master Licences typically grant sub-licences to persons called “Licence holders”. If your client is considering such an arrangement, you should always seek legal advice on the control and legality of the Master Licence. Section 28(4) of the Trade Marks Act 1994 provides that references to a licence or licensee include a sub-licence or sub-licensee.

You should have a copy of the Trade Mark Handbook with you. Please read section 117-004 – “Is a Licence required?”.

When you have read that, please then read section 117-019 on “Sub-licensing”. Note the comment that a practical consequence of sub-licensing is to weaken the chain of control between the trade mark proprietor and the ultimate user, which can, in turn, threaten the integrity of the trade mark right.

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Remembering what you have just read, please try to answer the following questions.

Which section of the Act normally covers distributors of goods?

Which Article of the Harmonisation Directive deals with licence agreements (and influences section 28 of the Trade Marks Act 1994)?

Is a verbal licence valid, under the terms of the Act?

A client of yours has just bought an existing business, including all its registered trade marks. You have already dealt with recording the assignment of these marks to your client. There are a number of licensees of these marks, and your client is unhappy about these; he would prefer not to have licensees. Is he bound by the licence agreement signed by the assignor?

Now see how you got on.

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Compare your answers with these.

Section 10(6)

Article 8(1).

No – section 28(2) provides that it is effective only if it is in writing and signed by, or on behalf of, the person granting the licence.

Under section 28(3) – yes – unless the licences themselves provide otherwise.

Important

Note this, because it is unusual for something like this to be binding on successors in title, and you may need to make clients aware of it.

Then look again at section 25(3)(a) of the Act, and re-read what the Handbook has to say about conflicting interpretations. Until we have a decided case on this subject, we do not really know how to interpret this.

If you wish, make a note to talk to your trainer when you have finished the Module.

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The Trade Marks Act 1994

Next, we will look at the provisions of the Act regarding licences.

Read sections 25 and 28-31 of the Trade Marks Act 1994, then answer the following questions.

When the registered proprietor has granted a licence, may the licensee then also license the mark?

What does the term “exclusive licensee” mean?

May a licensee bring proceedings for infringement of the trade mark?

An exclusive licensee may have much wider ranging rights under the 1994 Act than any other type of licensee. Provided that the rights are not excluded by the licence, what additional rights does an exclusive licensee have?

Check your answers.

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Our answers.

Yes - under section 28(4). A licensee may sub-license the mark - but only if the original licence allows them to do so.

“Exclusive licensee” means that only the licensee is entitled to use the mark as specified in the licence. Even the proprietor cannot use it. (section 29)

Yes, unless the licence makes other provisions - but the licensee must ask the proprietor to take action first. Then, if the proprietor doesn't do so within two months - or refuses to - the licensee can take action. But the licensee cannot, without leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. (Sections 30[2] and[3])

An exclusive licensee has the same rights and remedies as an assignee sections 31, including the right to bring infringement proceedings in its own name.

Now read on.

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The Trade Marks Rules 2000

Please spend a little time now reading Rules 40, 41 and 42, which include provisions relating to licences, then answer the questions below.

What is the minimum information required by the Registry to record a licence?

Which form do you file in relation to record i) the grant of a licence? ii) the amendment or termination of a licence?

Are details of licences that have been recorded at the Trade Marks Registry available to the public?

Now check your answers.

GOLD

How did you get on?

the name and address of the licensee a statement whether the licence is exclusive a description of any limitations to the licence the duration of the licence, if for a limited period Rule 40(b)

i) Form TM50 ii) Form TM51

Yes – see Rule 42.

You shouldn’t have found those too difficult. Next, we’ll discuss the reasons for recording licences at the Trade Marks Registry.

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Recording licences

Note that it is not compulsory to record licences at the Trade Marks Registry. However, it is advisable to do so.

Why might you advise your clients to record their licence agreements at the Registry? (Think about the Act, and other Modules you have worked through.) Make a list of your ideas.

Then look at our notes.

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The advantages of recording licensees

We thought of these advantages.

A trade mark registration may be revoked for non-use, under section 46 of the Act - we discuss this subject in the Pink Module. However, use of a trade mark with the proprietor's consent counts as use - and use by a licensee is such use. Note that this does not have to be use by a recorded licensee - but recordal helps to put the use with consent on record.

A ground for the invalidation of the mark is that the proprietor has allowed the mark to become misleading. It could be argued that permitting people to use the mark without any controls amounts to this. Preparing a suitable licence agreement and recording the licensee is one way of ensuring that the proprietor's terms of consent to the use of the mark are a matter of record, and may help to refute allegations that the mark has become misleading.

If a licence is not recorded, the licensee cannot take action for infringement of the trade mark under the Trade Marks Act 1994.

Until the licence is recorded, exclusive licensees do not have the rights granted under section 31 of the Trade Marks Act 1994.

Unless the application for recordal of a licence is made within six months, there are no rights to damages or an account of profits in respect of any infringement action launched against third parties under the Trade Marks Act 1994, except in respect of infringement which takes place after the licence is finally recorded.(Note – if you are also likely to be involved in patent licences, be aware that for patents, the licence must be recorded by the Intellectual Property Office within six months. For trade marks, only the application to record needs to be made within the six months.)

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Licensees and infringement

Please now read section 117-020 of the Trade Mark Handbook – “Licensees’ rights to sue for infringement”.

You can see that a licence may deprive the licensee of the rights of action set out in the statute, but it cannot confer extra rights, in the case of any infringement, other than those specified in the Trade Marks Act 1994.

In other words, any commercial agreement must always be based on what the Act actually says.

Now read sections 117-028 and 117-030 of the Trade Mark Handbook, which covers the advantages of registration from the points of view of both the trade mark owner and the licensee.

Note that it is almost always to the licensee’s advantage, in particular, to have the licence registered since this triggers the infringement rights and gives third parties notice of those rights.

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Transitional provisions

We’ll now look briefly at the pre-1994 provisions, as you may find references to the old terms from time to time, and it will be helpful for you to understand them. There are still many pre-1994 licences noted on the Register. Turn to Schedule 3 to the Trade Marks Act 1994 - transitional provisions.

Please read paragraphs 6 and 9 and then answer the following questions. 1.

Does a licensee have a right, under section 30 of the 1994 Act, to take action in respect of trade mark infringement which happened before the Act came into force?

A different term was used for licensees under the 1938 Act. What was it?

What happened to users registered under the Trade Marks Act 1938 (as amended)?

Compare your answers with ours.

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Our answers.

No. Schedule III 6(1).

Licensees were known as "registered users". Schedule III 9(2). Sometimes the terms “authorised users” or “permitted users” were also used, and you may still see references to this terminology.

They were transferred to the new Register as licensees. Schedule III 9(2).

You probably found these straightforward! Now move on.

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Interpretation of the Trade Marks Act 1994

We'll look now at some case law guidance on the interpretation of the provisions of the Act relating to licences.

You should have with you a copy of the case Northern & Shell Plc v Condé Nast & National Magazine Distributors Ltd & another [1995] RPC 117.

Please spend some time reading it now.

You should have noted that it was held that Section 30(3) of the Trade Marks Act 1994 did not confer proprietary rights on the licensee Section 9(1) of the Act does not allow the proprietor of a registered trade mark to complain of trade mark use which has their consent.

Look at Section 9(1) now if you wish.

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The Trade Marks Registry Work Manual

You should have with you a copy of Chapter 6 of the Work Manual. Please read part 4 “Registrable transactions” now, to find out about how the Registry deals with applications to record licences. Please pay particular attention to 4.2 – “Licences”.

Note that the only document that must be filed is a form TM50, which may be signed by the registered proprietor or the proprietor's representative. It is not necessary, and it is sometimes inappropriate (for example, for reasons of confidentiality) to file the original licence agreement.

However, it is also possible to file additional documentary evidence - normally in the form of a licence agreement between the parties, or a witness statement. (We discuss the preparation of witness statements in another Module.)

Your client may well instruct you to prepare a licence agreement to ensure that the rights of both parties are protected. Whether you submit this to the Trade Marks Registry depends on whether your client wants to make the terms of the agreement a matter of public record.

Bearing in mind that the contents of the Register are public, your client may not want commercially sensitive information contained in a licence agreement that you are going to send to the Registry.

On the next pages, we give you a sample licence agreement.

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LICENCE AGREEMENT THIS AGREEMENT is made the 23rd day of July 2006 BETWEEN 1.

KING LEAR LIMITED, a Company Incorporated under the laws of England and Wales under No. 3, 000, 111, of The Blasted Heath Industrial Estate, Albany, Kent, TN16 1NT (hereinafter referred to as “the Proprietor”) of the one part

and 2.

MACBETH LIMITED, a Company Incorporated under the laws of Scotland under No. 100,200, of Cawdor House, Birnam Wood, Dunsinane, DU9 8UD (hereinafter referred to as “the Licensee”) of the other part.

WHEREAS 1. The Proprietor is the Proprietor of the trade mark OTHELLO (hereinafter referred to as “the trade mark”), registered in the UK under number 2 234 567, in Class 5, in respect of Insecticides and pesticides; all included in Class 5 (hereinafter referred to “the goods”). 2. The Licensee wishes to use the trade mark in relation to all or part of the goods. 3. The Licensee has requested the proprietor’s permission to use the trade mark in the UK. 4. The licensee is not the only person authorised to use the trade mark. 5. The Proprietor approves of and will permit such use (“the permitted use”), subject to the terms and conditions herein.

NOW IT IS HEREBY AGREED AS FOLLOWS 1. Subject to the provisions set out below, the Proprietor hereby permits the Licensee to use the trade mark; such use to be non-exclusive in relation to the goods.

GOLD

2. The Proprietor shall at all times control and direct the quality of the goods sold under the trade mark. 3. The permitted use shall continue only for as long as the goods have been, and continue to be, manufactured and/or marketed by the Licensee with the approval of the Proprietor in determining the manner of such use and with intent that the Proprietor exercises full effective and continuing control over the use of the trade mark by the Licensee, and subject to the termination provisions in Clause 8 hereinbelow. 4. The Licensee shall on request and at reasonable notice permit the Proprietor and/or the Proprietor's authorised representatives to inspect and assess such goods and the methods of manufacture and/or marketing thereof and submit samples of goods and/or samples of advertisements as are reasonably necessary for the Proprietor to continue to determine and to control the manner of the “permitted use”. 5. The Licensee shall at all times mark or cause to be marked the goods with an acknowledgement of the ownership of the trade mark in a manner approved by the Proprietor. 6. The Licensee shall notify the Proprietor promptly of any threatened or potential or actual infringement of the rights in the mark which may come to the Licensee’s notice and if the Proprietor decides to act in relation to such infringement (or in relation to any other infringement of the rights in the trade mark), then the Licensee shall render all reasonable assistance to the Proprietor in such action. 7. The Proprietor shall apply to record the Licensee as a licensee of the trade mark in accordance with Section 25 of the Trade Marks Act 1994 and the Licensee shall if required by the Proprietor do all things reasonably necessary at its own cost to assist in procuring the registration the Licensee as a licensee of the trade mark. 8. This License shall be terminated immediately in the event of fundamental breach of the terms hereinabove, in particular but not exclusively, breach of Clause 3 above and in the event of fundamental breach of the license, it shall be lawful for the Proprietor to terminate this Agreement forthwith; 9. Saving for the provisions of Clause 8 hereinabove, this License shall remain in force for a period of one year form the date hereof and shall continue in force until terminated by either party giving to the other party six months’ notice in writing to terminate this Agreement or until terminated by the Proprietor giving notice as provided herein but in the event of any breach of the Agreement it shall be lawful for the Proprietor to terminate this Agreement forthwith. 10. Upon notice of termination of this Licence being given, the Licensee (a) shall cease forthwith making any further use of the trade mark whatsoever (b) if applicable, shall consent to the cancellation of its registration as a Licensee of the trade mark and (c) shall return to the Proprietor or shall otherwise deal with under the direction of the Proprietor all articles (whether or not comprising the goods) bearing the trade mark and in possession of the Licensee.

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11. On expiry of the notice under paragraph 10 hereinabove of the Agreement, everything contained herein shall be cancelled save for the Licensee’s continuing obligation under paragraph 10 hereinabove, without prejudice to any rights the Proprietor may have against the Licensee arising prior to termination. IN WITNESS WHEREOF the parties have caused these presents to be executed by their duly authorised officers the day and year first written above. By or on behalf of the Proprietor __________________________________________________________________ ___________________________________________________________________ By or on behalf of the Licensee ____________________________________________________________________ ____________________________________________________________________

Now that you have read through the sample Licence Agreement, you will need to think about some of the terms we have used. Try answering these questions. 1.

What is meant by a “continuing and controlling involvement”?

What is the particular importance of Clause 4?

Why does the Agreement provide for a term of only one year?

Now look at the answers and see how much you have understood.

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How did you get on?

This should mean that the proprietor has clearly defined quality control procedures should visit the licensee regularly and should inspect the products.

It is necessary to ensure that the licensed goods are clearly marked to indicate their origin. The following wording is normally acceptable on packaging “OTHELLO is a trade mark of King Lear Ltd, used under licence by Macbeth Ltd”.

This is so that the commercial relationship between the parties may be reviewed regularly. Licensees frequently want a longer term, particularly if they are required to make substantial investments in order to use the licensed mark. A longer term – say three years - may also be acceptable to both parties, in these circumstances. It will depend on the circumstances and, in particular, the nature of the goods and services.

Well done if you got all of these right. If you had problems answering the questions, please make a note now of whatever puzzled you, so that you can talk it through with your trainer later.

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TM 50

The form you need to fill in to apply to register a licence is the TM50.You can download these from the Intellectual Property Office website. Filling in the form as such is straightforward, so we don’t give you a separate exercise on this. Nevertheless, there are some points that you do need to bear in mind. In Box 4 you need to type in when the licence starts and when it ends, but if it is a licence without term, then you write the words “Without term” at 4b. We have seen what is meant by an exclusive licence. In Box 5 you have to write “Yes” if the licence is exclusive, or “No” if it isn’t. You should make sure you understand the difference – and you must fill this section in, otherwise the Registry will come back to you. Box 6 asks you if the licensee is to be recorded for all the goods or services of the registration or limited by geographical area. Again, these are not difficult questions but you do need to understand the licence agreement itself. Boxes 8 and 9 are slight traps for the unwary. There need to be signatures by or on behalf of both the licensor and the licensee. You are likely only to be acting for one of the parties. So you can sign on behalf of that party but you are not normally authorised by the other party and indeed there might be a conflict of interest if you were acting for both of them. The way round this is either to make sure that the other party signs the TM50 at the time that it signs the main licence agreement, or to have a clause in the agreement requiring the other party to sign subsequent documentation. If your client is happy for you to do so, you could also ask the other party for authorisation to act on their behalf in the matter of recordal. This would be one of the rare occasions where you are acting on behalf of both parties in the same transaction.

Note – there are no fees to be filed with a TM50. The Trade Marks Registry encourages licence recordal by not – at the time of writing – charging for it.

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TM51 You should have form TM51 – “Application to remove or amend the registration of a licensee” – with you. Please take a look at it now.

You have almost reached the end of the Gold Module. As usual, please take some time now to make notes of any points you would like to discuss with your trainer.

Then move on to the quiz.

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Test yourself

Which Sections of the Trade Marks Act 1994 deal with licences and the rights of licensees?

On which form would you file an application to record a licensee?

Does the Trade Marks Registry charge a fee for licence recordal?

What must be shown when applying to record a licensee, according to the Rules?

As well as the necessary form, what other documents might you file?

Which form do you use to remove the registration of a licence?

Check your answers.

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The answers.

Sections 28 to 31.

Form TM50.

You must show the name and address of the licensee whether the licence is exclusive a description of any limitations to the licence whether there is a limited period for the licence.

You might file a licence agreement or a witness statement – but it is not essential if both parties sign the licence.

Form TM51.

BRONZE

BRONZE MODULE

Trade Mark Assignments and their Recordal

BRONZE

In this Module, we discuss what happens when the ownership of a UK trade mark registration changes.

To complete this Module, you will need copies of The Trade Marks Act 1994 The Trade Marks Rules 2000 Chapter 6 of the Trade Marks Registry Work Manual (“Register Adminstration”) Chapter 116 of the Trade Mark Handbook Chapter 118 of the Trade Mark Handbook Internet access. When you have completed this Module, you will have Listed the reasons why ownership of a UK trade mark registration might change Identified the Sections of the Trade Marks Act 1994 that deal with assignments Listed the information you will need for the preparation of an assignment Completed a form TM16

This Module will take approximately one day to complete.

BRONZE

The transfer of trade marks

Please begin by reading section 116-001 to 116-004 of the Trade Mark Handbook. When you have read it, you should have seen that, since 1875, the law has provided that trade mark rights are capable of transfer from one person to another by an assignment. However, it is only since 1994 that the Trade Marks Registry has relinquished its powers to make enquiries into transfers before agreeing to record assignments.

Why might the ownership of a registration change?

Now think about the possible reasons why a trade mark might pass into different ownership. List as many circumstances as you can think of, where the proprietor might change.

Then compare your list with ours on the next page.

BRONZE

The proprietorship of a trade mark may change where an entire business is sold, including assets such as trade marks the trade mark alone is sold - perhaps because it's unused or because the proprietor has received a good offer for it (we see in the Ultramarine and Orange Modules that buying a trade mark can be a way of overcoming problems posed by the existence of a prior mark). a company becomes insolvent and the Receivers or liquidators sell its assets, including the trade marks a trade mark is owned by one legal entity which then changes (for example, a sole proprietor forms a limited company) there is a change in the structure of a group of companies for tax or other reasons, involving transfers of rights the owner dies and the mark is inherited by someone else You may have thought of some more examples.

If the ownership of a registered trade mark changes, it's important to make sure that the new ownership is correctly recorded at the Trade Marks Registry. One of the principal reasons is that only the registered proprietor (or in some circumstances a licensee) can sue for infringement. The Trade Marks Act 1994 places strong emphasis on the registration of transactions affecting registered trade marks. We use the term recordal for the process of registering (recording) such a transaction. However, recordal is not compulsory.

BRONZE

The Trade Marks Act 1994

You should have a copy of the 1994 Act with you.

Read sections 24 and 25 of the Act, then answer the following questions.

In what ways may a registered trade mark be assigned or transmitted?

A trade mark registration may be assigned or transmitted wholly or in part. What forms may a partial assignment take?

At what point, in England, does an assignment become effective?

Does the 1994 Act provide for the assignment of unregistered marks?

Why would a proprietor want to register a transfer such as an assignment?

Compare your answers with ours.

BRONZE Our answers. 1.

A registered trade mark may be transferred by assignment testamentary disposition (a will) operation of law under section 24(1), which regards trade marks registrations as being transmissible in the same way as any other property.

A partial assignment can be limited to some of the goods or services covered the way the mark is used the locality in which the mark is used, by geographical division by field of application – for example, wholesale/retail, industrial/household under section 24(2).

An assignment becomes effective when it is in writing and has been signed by, or on behalf of, the assignor. See section 24 (3).

No, the Act does not cover assigning unregistered marks - see section 24 (6) except in one circumstance, which we mention further on.

The proprietor should record the assignment because, under section 25(3) and (4), until the proprietor (or the proprietor's representative) has filed an application to register the assignment: the rights of the new owner won't be effective against a third party who acquires a conflicting interest in the mark the proprietor is not entitled to damages or an account of profits in respect of any infringement which took place between the date of the assignment and the date of the application to record the assignment, without good reason, if there is a delay of more than six months in applying to record the transfer.

BRONZE

Sections 46 and 47

Now read Sections 46 and 47 of the Trade Marks Act 1994.

You should have realised that, while proprietors are free to assign trade marks in any way they wish, nevertheless they must think carefully about the possibility of deceiving or misleading the public if they assign the mark.

Where deception or being misled occurs, the trade mark may be susceptible to attack on grounds of invalidity under s.47.

A proprietor should be particularly wary of assigning a number of registrations of the same mark, for different goods, to different parties assigning separate parts of the same registration to different people.

BRONZE

Taking instructions to record an assignment

Spend a few minutes thinking about what you have just read, and what you might need to know when your client instructs you to record the change of ownership of a registered trade mark at the UK Trade Marks Registry. Then make a list of everything you think you might need to know, before you can prepare an assignment.

Then compare your list with ours.

BRONZE

We think that you will need to check

The date the assignment actually took place Whether there is actually a registration in force - or has your client allowed it to lapse? What is actually being assigned Does the registration cover the goods and services your client thinks it does? In whose name the mark is actually recorded at the Trade Marks Registry? Sometimes, even if you believed that your firm has always acted for a client, you will find that someone else - perhaps their solicitor or even accountant has prepared and recorded an assignment of which you knew nothing - and which your client has forgotten. It may even happen that a third party prepared an assignment and then forgot to record it. To whom is the mark being assigned? Are there any licences or other "interests" affecting the mark? Have any agreements been made with third parties restricting the use which can be made of the mark? (Your client may need to pass such details on to the person assuming ownership.) Is the mark currently subject to infringement, revocation or invalidity proceedings? (Don't forget that a letter may have been sent directly to your client rather than to you as agent.) Is your client continuing to use a mark similar to the mark that is being assigned? (This could result in use of the mark to be assigned, by the new owner, damaging one of your client's existing marks.) Is the goodwill in the business or the mark being assigned, or is there no goodwill being assigned? Is this an “Agreement between Undertakings” with European law implications?

Well done if you thought of all of these.

BRONZE

Finding out more

Your client is Quicksilver Limited. They tell you that “We have sold our trade mark PROTEUS, for guttering, to another company, Moonlight Ltd”. What do you need to find out?

Firstly, you should carry out searches. As we saw on the previous page, there may be transactions that your firm doesn’t know about, and clients’ own records are sometimes unreliable, so you should search the Trade Marks Registry’s own records. Don’t forget that the purpose of the Register is to serve as a prima facie record of ownership.

Your searches reveal registrations in the name of Quicksilver Ltd for PROTEUS in Class 6, covering “metal guttering” in Class 19, covering “non-metallic guttering” QUICKSILVER PROTEUS, in Class 6, covering “metallic building products”. All of these marks were registered under the Trade Marks Act 1994. You also find a recent application, filed by a different firm of agents, for PROTEUS, covering “metallic and non-metallic building products”.

At this point, you need to ask your client what exactly it has sold to Moonlight Ltd. The Managing Director tells you that they have sold the rights to make metal gutters, as his firm has reduced its factory space to save costs, and now makes only plastic guttering, and they do not, currently, use the PROTEUS trade mark at all. However, he has now realised that many of their customers are loyal to the PROTEUS name, and would like to keep it for use on plastic products other than guttering.

What should you do now?

Firstly, ask to see any paperwork that has passed between the two parties. Then consider whether recording an assignment is the most appropriate thing to do, and the most beneficial for your client.

BRONZE

In the Gold Module, we look at licences – and a licence may be the answer for Quicksilver Limited at this point. An exclusive licence may appeal to Moonlight Ltd, as it gives them rights to use the mark for the goods in question that preclude even Quicksilver Ltd from using it for those goods. There is also the possibility of a nonexclusive licence, which could retain rights for your client. However, in this case, an assignment seems the most appropriate course of action. So what else do you need to check?

Goodwill You should be aware that most trade marks are assigned along with the goodwill of the business in which they are used. But trade mark registrations can also be assigned separately from the goodwill; for example, if a business is continuing to manufacture a product sold to the same customers but under a different trade mark, it may sell the earlier trade mark without the goodwill.

The “house” mark Remember that there was a registration of the mark PROTEUS together with the company name QUICKSILVER. Your client does not want, obviously, to give Moonlight Ltd any rights in its company name. However, for it to retain the registration as it stands might be considered deceptive or misleading. So it could cancel this registration – or, perhaps better, it could part-cancel it in respect of the goods it no longer makes, but retain the registration to cover other goods.

Next, we will look at what might become of the remaining registrations.

BRONZE

The remaining registrations Should your client assign one or both of the PROTEUS registrations to Moonlight Ltd? This will depend on discussions between the companies. Moonlight Ltd may well have trade mark attorneys of their own, who will have their own advice. (You should not be acting for both parties; this would generate a considerable conflict of interest, and be contrary to professional duty.) There might be an advantage to your client in assigning only the Class 6 registration, as Quicksilver is making only plastic products. However, Moonlight Ltd might feel that they are getting better value if they take over ownership of both registrations.

The recent application Look back at the specification for this and think about the implications. It is extremely broad. It includes both goods for which your client is assigning rights, and goods for which your client has decided it may use the mark in future. There needs to be a voluntary limitation of the goods to exclude guttering and parts and fittings for guttering. It would be more straightforward if you were to take over responsibility for this application, so this is also something you need to discuss with your client. If your client is determined to leave the application in the hands of the other agents, the other agents need to be told exactly what is happening.

European law implications Depending on the size of the two companies, you must look at whether the agreement between them might be held to restrict competition, divide the single market or be an abuse of a dominant position. We don’t go into this in detail here, but for larger companies, you should always consider whether Articles 81 and 82 of the Treaty of Rome have any bearing on the transactions you are dealing with.

The future It may one day happen that there is a dispute between the two companies, particularly since your client wants to retain the trade mark for some goods. We strongly recommend that you prepare a Prior Rights and Non-Attack Undertaking between the parties, or include such provisions in the assignment. Make a note to discuss these with your trainer when you have finished, as these are beyond the scope of this Module.

BRONZE Checking ownership where a limited company is involved It is common for companies to change their names, or, unfortunately, record trade mark ownership in the wrong name. Companies may also be sold, and become part of, or leave, large groups of companies. You should always ensure that the company assigning the trade mark is entitled to do so. You may need to record preliminary assignments and/or changes of the proprietor’s name and/or address before being able to record your assignment.

V How can find out about the company history of your client? You can check publicly available records. There are a number of commercial databases of company registrations – if you are not familiar with those used at your office, please ask your trainer about this when you have finished this Module. (The Companies House Register has a link from the Trade Marks Registry website.) You will file one or more forms TM16 and/or TM21, and you will also need documentary evidence of the various transactions. Your client may have this, or they may need to obtain it from their solicitor or accountant. Certified copies of the Certificates of Incorporation from Companies House will be helpful for changes of name and company dissolutions. However, remember that the Trade Marks Registry does not want original documents to be filed with the forms TM16. As this is only possible if you can sign for both parties, you need to think about whether you are, or can regard yourself as, authorised to sign for both parties. Can you sign for a dissolved company? (Can anyone – it doesn’t do to think too hard about it sometimes.) If officers of the earlier companies are not available to sign documents, you may prepare a Witness Statement, confirming the previous transactions, for signature by a current officer of the company (such as the Managing Director or Company Secretary).

BRONZE

Important

As you will appreciate, the types of situations we have looked at are complex.

At this stage in your training, if you do come across a situation of this kind, you should seek advice from your trainer or another senior colleague on exactly what to do – but you must be aware of the possibility and carry out appropriate searches, as outlined above.

Administrative receivership

If your client is in receivership, there will be an appointed Receiver who is responsible for disposing of the assets. The Receiver has a duty to try to obtain the best price for those assets.

If your client is buying a trade mark from a company in receivership, bear in mind that the Receiver cannot guarantee correct ownership, so your searches must be scrupulously careful.

Note also that the Receiver will be a party to the assignment, and must be included in the assignment documents.

Again, if and when you come across a case of this kind, don’t attempt to deal with it for the first time on your own. Ask advice from your trainer.

BRONZE

The 2000 Rules

You should have with you a copy of the Trade Marks Rules 2000.

Please read Rules 40, 41 and 42 now, then answer the following questions.

What particulars of an assignment are entered on the Register?

Is it necessary to state whether the mark is being used at the time of the assignment?

Does there have to be documentary evidence attesting to the transfer, as well as the TM16?

Now check your answers.

BRONZE

How did you get on?

The name and address of the assignee The date of the assignment Description of the right assigned.

No.

Yes, if a written assignment document doesn’t exist, you must have one. The form TM16 is not a substitute for an assignment document. It can be used to record an assignment, and the Trade Marks Registry doesn’t need to see the original – but the original must exist.

Trade Mark Handbook

Now please read paragraphs 116-048 and 116-049 of the Trade Mark Handbook.

Next, we move on to look at stamp duty.

BRONZE Stamp duty The current position concerning stamp duty on transactions in trade marks (and other intellectual property) was set out in the Finance Act 2000, s 129, and subsequent finance legislation. It abolished stamp duty, for intellectual property transactions, with the object of encouraging “invention and innovation”. However, it carries limitations.

Important The first thing to be aware of is that the position differs depending on the date of the transaction. The second thing to note is the definition of intellectual property.

The first thing to look at is the date of the transaction. Is it dated Before 28 March 2000? If yes, stamp duty may be payable, depending on the amount involved On or after 28 March 2000? If yes, the transaction will be exempt from stamp duty, provided that it relates to intellectual property.

We mentioned that the exemption applies to intellectual property.

Please think for a moment, then make a list of all those items you think should fall within the definition of intellectual property, for purposes of stamp duty. Then compare it with our list on the next page.

Intellectual property for the purpose of stamp duty exemption covers, specifically, 17

BRONZE

Patents Trade marks Registered designs Copyright Design right Plant breeders rights and rights under section 7 of the Plant Varieties Act 1997 Licences or other rights in respect of the items listed above Corresponding rights under laws of countries outside the UK.

Goodwill In 2002, the government dealt with an anomaly whereby goodwill was still subject to stamp duty. It no longer is, where the goodwill relates to an assignment of trade marks.

Now please read paragraph 118-032 of the Trade Mark Handbook.

Note If you are dealing with an assignment dated before 28 March 2000, or one where goodwill is involved, if executed before 23 April 2002, you must speak to your trainer. For practical help with stamp duty on intellectual property, contact the Birmingham Stamp Office. Note that if a pre-March 2000 document is brought into the UK for the first time now, it should be presented for stamp duty within 30 days of coming into the country.

BRONZE

The Trade Marks Registry Work Manual

Please read section 4.1 (“Assignments”) of Chapter 6 of the Trade Marks Registry Work Manual.

Then answer the following questions, from memory as far as possible.

What must be filed for an assignment to be recorded?

By whom must an assignment document be signed?

Who must sign the TM16?

What steps does the Registrar take to ensure that partial assignments do not result in the mark becoming deceptive?

Which rule states the particulars that are entered on the Register – and what are they?

Where should you go for advice if the assignment is dated prior to 28 March 2000?

Check your answers.

BRONZE

The answers.

Form TM16, and fees (£50 per TM16 at the time of writing, irrespective of the number of marks listed).

An assignment document must be signed by, or on behalf of, both parties to the transaction.

Normally, both parties or their agent must sign the TM16. But if this is not possible, the Trade Marks Registry may accept copies of the unsigned TM16 as proof of the assignment.

None - the responsibility lies with the proprietor.

Rule 40(a). the name and address of the assignee the date of the assignment, if notified to the registrar within six months of the transaction taking place, or the filing date of the notification, if more than six months after the date of the transaction in the case of a partial assignment, a description of the right assigned.

The Birmingham HM Revenue and Customs Stamp Office.

We’ll now move on to look at an assignment document that is a separate enforceable contract between the two parties transferring the mark, in addition to the statutory form.

BRONZE Assignment documents

Next, please read our sample assignment document. The situation is one where the trade mark is being assigned as part of the transfer of a business - hence the transfer of the goodwill in the trade mark - and where no stamp duty is payable.

ASSIGNMENT OF TRADE MARK WITH GOODWILL

DATE

PARTIES

RECITALS

21st April 2006

The Assignor: Bright Thoughts Limited, a company incorporated under the laws of England, of Bright Court, Radiant Road, High Wycombe, Bucks, HP31 2BA (Company Registration No. 2 489 771).

The Assignee: Happy Face Limited, a company incorporated under the laws of England, of Happiness House, Pollyanna Road, Hemel Hempstead, Herts, WA1 1AA (Company Registration No. 3 005 989).

The Assignor is the registered proprietor of the trade mark BRIGHTA registered in the United Kingdom under number 2 222 123 in respect of "Periodicals; magazines; all included in Class 16" (hereinafter called "the trade mark").

The Assignor has agreed to assign the said trade mark to the Assignee TOGETHER WITH the entire goodwill of the business relating to the goods for which the said trade mark is registered, for the consideration appearing below.

BRONZE 4. AGREED PROVISIONS a)

The Assignor with full title guarantee hereby assigns unto the Assignee all rights, title and interest in and to the said trade mark for the goods in respect of which the said trade mark is registered to the intent that this Assignment shall operate to vest in the Assignee the entire benefit of the said trade mark TOGETHER WITH the goodwill of the business relating to such goods.

The Assignor hereby acknowledges receipt of the consideration of £15,000 now paid to the Assignor by the Assignee for the said transfer.

The Assignor covenants to execute all such documents, forms and authorisations and depose to or swear any Declaration or Oath as may be required by the Registrar of Trade Marks for vesting full right, title and interest to the said trade mark in favour of the Assignee.

5. SIGNED AS A DEED For and on behalf of Bright Thoughts Limited By: __________________________________________ Title: _________________________________________ For and on behalf of Happy Face Limited By: ____________________________________________ Title: ___________________________________________

Now you have read this, try to answer the following questions. 1.

Why were the Company Registration numbers included?

Why is there a consideration shown of £15,000?

The answers are on the next page.

BRONZE

Did you get these right? 1.

Because it may be essential to prove which party was, at the date of the assignment, actually assigning the mark, and having the company numbers ensures this even if there are subsequent changes of name.

Because the assignment is a contract and there must be two-way consideration for a contract to be valid and enforceable. The cost of obtaining the registration can be calculated – say £1,000, and the balance is for the goodwill. If you were to show a nominal consideration, the validity of the transaction might be vulnerable to challenge.

Form TM 16

Go to www.ipo.gov.uk/tm/forms/tm16.pdf and print out the form TM 16. Using the information from the assignment example above, fill out the TM 16. Please show it to you trainer when you have reached the end of this Module.

A decided case Make a note now to read Coflexip Stena Offshore Ltd’s Patent [1997] RPC 197, when you have finished this Module. Although it is specifically about patents, it covers generally applicable issues regarding all intellectual property assignments. The whole area is extremely complex. Please make a note now to discuss this case, and its implications, with your trainer when you have finished this Module.

BRONZE

European considerations Any assignment which prevents the free movement of goods under Article 28 EC (previously Article 30), by being in some way a disguised restriction on trade, will be deemed invalid unless it is justified under Article 30 (previously Article 36). When you have finished this Module, you should read the IDEAL STANDARD trade mark case (Case C-9/93 IHT Internationale Heiztechnik GmbH [1994] ECR. I-2789; [1995] FSR 59) and then discuss it with your trainer. Do bear in mind also that any assignment which follows a market-sharing agreement will still be prohibited under Article 81 (previously Article 85) as being anticompetitive.

You have almost reached the end of this Module. When you have completed it, you could, if your office has a trade marks practice, discuss any assignments your office has dealt with.

Now move on to the quiz.

BRONZE

Test Yourself

On which form do you file an application for the recordal of the new owner of a registered trade mark?

Which Sections of the Trade Marks Act 1994 deal with assignments?

In the case of an assignment, what is entered on the Register?

Check your answers.

BRONZE

The answers.

Form TM16.

Sections 24 and 25.

The name and address of the assignee The assignment date A description of the details in the case of a partial assignment the date of the entry on the Register.

GREEN

GREEN MODULE

Certification and Collective Marks

GREEN

In this Module, we discuss two forms of trade mark registration that are relatively rare - Certification Marks and Collective Marks.

To complete this Module, you will need copies of The Trade Marks Act 1994 The Trade Marks Rules 2000 The Trade Marks Registry Work Manual “Certification and Collective Trade Marks” Chapter 4 (updated July 2006)

When you have completed this Module, you will have Identified the parts of the Trade Marks Act 1994 that deal with certification marks and collective marks Stated the purpose of a certification mark Read the Rules governing certification and collective marks Defined what a collective mark is.

This Module will take approximately half a day to complete.

GREEN Certification marks

We begin by looking at the statutory provisions.

You should have a copy of the Trade Marks Act 1994 with you. Please read section 50 and Schedule 2. Then read part 1.2 of the Work Manual, Chapter 4 (“Definitions”).

Then answer the following questions. 1.

What is the purpose of a certification mark?

How is section 1(1) of the Act interpreted in the case of certification marks?

Can a certification mark be registered if it consists of a geographical name?

Can a cheese manufacturer register a certification mark certifying the characteristics of the cheeses that are the manufacturer’s main source of income?

What must be included in the regulations?

What happens if the fees are not paid and/or the regulations are not filed by the due date?

Who may see the regulations?

Who must consent to the assignment of a certification mark?

Check your answers.

GREEN

The answers.

The purpose of a certification mark is to indicate “... that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics”.

Section 1(1) of the Act is rephrased for certification marks so that it reads that a certification mark distinguishes goods or services which are certified from those which are not. Schedule 2, paragraph 2.

Yes. Schedule 2, paragraph 3.

No. A proprietor actually carrying on the business supplying the goods or services in question cannot register a certification mark. Schedule 2, paragraph 4.

The Regulations must indicate: who is authorised to use the mark the characteristics of the goods or services that the mark is certifying how the certifying body tests the characteristics how the certifying body supervises the use of the mark any fees to be paid in connection with the mark procedures for resolving disputes. Schedule 2, paragraph 6(2).

GREEN

The Registry will deem that the application has been withdrawn. Schedule 2, paragraph 7(2).

Anyone. The regulations are open to public inspection. Schedule 2, paragraph 10.

The Registrar. Schedule 2, paragraph 12.

On the next page, we go over some important points for you to make a note of.

GREEN

Points to note

You have now seen that the purpose of a certification mark is to provide a means by which consumers can see that a particular product or service conforms to specified criteria. Well-known examples of certification marks include the “Wool mark”, and the STILTON name.

Please note an important point. Proprietors providing the goods or services in question cannot register a certification mark. However, groups of proprietors can form trade associations which are separate entities in their own right, and these associations can register certification marks. Universities or government departments may also seek to register certification marks. However, the Regulations should demonstrate to the Registrar that the applicant is capable of controlling use of the certification mark by others, and that it will do so.

Another point to note is that the proprietor of a certification mark must allow anyone who conforms with the conditions set out in the regulations to use the mark. So if you are advising a client on the registration possibilities available, you should ensure that your client is aware of this. Indeed, you should advise your client about the possibility of applying for a normal trade mark, rather than a certification mark.

Finally, you should also note that this Module deals with the situation in the UK. Not all foreign countries make provision for the registration of certification marks something that you must bear in mind if your clients are contemplating foreign filing programmes. (If you do not know what the position is in a particular foreign country, you will obviously need to ask an agent in the country in question.) In particular, it is not possible to register a certification mark as a Community Trade Mark.

Next, we'll consider the relevant Rules relating to certification marks.

GREEN

The Rules

Look now at the Rules which refer to certification and collective marks – Rules 22 and 23. Then answer the questions below.

How long does the applicant have to file the relevant form and the regulations governing use of the mark, and what form is to be filed?

Must amended regulations be advertised?

If someone wishes to oppose the amended regulations, which form should they use?

Compare your answers with ours.

GREEN

Check your answers.

The applicant must file form TM 35 and regulations within nine months of making the application. Rule 22(1).

The amended regulations will not be advertised as such, but the Registrar, if it “appears expedient”, will publish a notice stating where the public can inspect copies. Rule 22(2).

An opponent should use form TM7, which includes a statement of grounds.

Now move on to find out what the Trade Marks Registry Work Manual says about certification marks.

GREEN

The Trade Marks Registry Work Manual

Now please turn to chapter 4 of the Trade Marks Registry Work Manual, and read part 1.3.

Now read section 3.4, which deals with certification mark regulations. Then, please answer the following questions. As far as possible, try to answer the questions from memory, rather than looking the answers up. 1.

Is it necessary for the regulations to identify precisely who the authorised users are?

What does the Work Manual say is the aim of the regulations with regard to the characteristics being certified?

Do the Regulations need to specify how the certified characteristics will be checked by the proprietor?

May the proprietor charge a fee for users of the mark?

Compare your answers with ours.

GREEN

Our answers.

No, but if there is a register of authorised users, the applicant may say so. If anyone may use the mark, the applicant should state this.

“To provide a clear and objective statement that would allow anyone reading them to know precisely what characteristic is being certified.”

Yes.

Yes – but such fees should be “proportionate to the nature of certification necessary, particularly where the holder’s mark is the de facto standard for the goods and services concerned”.

Next, we look at collective marks.

GREEN

Collective marks Prior to the implementation of the Trade Marks Act 1994, there was no provision in the UK for the registration of collective marks. A collective mark allows associations to register marks, with no concession that anyone who fulfils the appropriate conditions may use the mark - only members of the association in question can use it. They may be of particular benefit to organisations who are unable to register a certification mark because they actually provide the goods or services in question. Collective marks are widely registered by professional bodies – such as the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys – to protect and govern the use of professional titles. Some other countries provide for collective marks. In particular, it is possible to obtain a European Community Collective Mark.

Please read section 49 of the Trade Marks Act 1994, and Schedule 1 now, then answer the questions below. 1.

What is a collective mark?

There is a very important difference between the persons permitted to register a certification mark, and those who may register a collective mark. What is it?

What must be set out in the regulations governing the use of a collective mark?

Is it possible to oppose an application to register a collective mark?

Check your answers.

GREEN

Our answers: 1.

“A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.” Section 49(1).

The proprietor of a certification mark may not carry out a business supplying the goods or services which are certified. This does not apply to an association which may be the proprietor of a collective mark.

The regulations must specify the: persons authorised to use the mark; conditions of membership of the association; conditions governing use of the collective mark (if any); and sanctions against any misuse of the mark - if any sanctions are provided. (Schedule 1, para 5 (2).)

Yes - Schedule 1, para 8 provides for oppositions to collective marks.

You have already read Rules 22 and 23, which cover collective marks as well as certification marks. However, if you wish to refresh your memory on these, you can re-read them now.

GREEN

The Trade Marks Registry Work Manual

Part 3.3 of Chapter 4 of the Work Manual sets out the Registry's approach to collective marks. Please read it, then try the short exercise below.

What factor does the Trade Marks Registry consider when deciding whether an applicant qualifies as an association?

What is the specific information that must be included in the regulations?

Check your answers.

GREEN

The answers.

“Whether the claimed association has a form of membership and can point toward the normal indications present in any form of association with members”.

The category of persons authorised to use the mark – in detail, including details of any specific requirements that a would-be user must have. But note that the regulations do not have to specify the exact persons who are authorised users (this used to be different). The conditions of membership of the association – you must specify all the conditions of membership. Any conditions of use of the mark, together with any clauses that are designed to ensure that there can be no objections that the mark is misleading. Sanctions against misuse of the mark.

Next, we will look at how the Trade Marks Registry examines applications for certification and collective marks.

GREEN Examination

Please read part 2 of Chapter 4 of the Work Manual, then try to answer the questions below. Please try to answer from memory. 1.

Would the following marks be likely to attract objections under section 3.1 of the Trade Marks Act 1994? i. Chartered Researcher ii. Purest Silk Baby Clothes.

When will the Registrar accept geographical names as certification or collective marks?

How might you overcome objections on relative grounds?

What happens if the Trade Marks Registry discovers that the applicant for a certification mark already owns a normal trade mark for the identical goods and services as those in the certification mark application?

What would you need to do in these circumstances?

What happens if the Trade Marks Registry discovers that the applicant for a collective mark already owns a normal trade mark for the identical goods and services as those in the collective mark application?

When is the Trade Marks Registry likely to raise objections that a certification or collective mark is misleading?

GREEN

Compare your answers with ours.

i. No, provided that you supply proof of chartered status. ii. Yes – this mark is simply descriptive.

Where they have the capacity to perform a distinguishing function.

By Filing consent Amending the specification Filing evidence of honest concurrent use. (We looked at overcoming objections based on earlier marks in more detail in the Ultramarine Module.)

The Trade Marks Registry will object – a certification mark will be refused if the owner has a business supplying the goods or services in question.

To overcome such an objection, you would need to file a statement from the applicant that they do not carry on such a business.

Nothing – there is nothing to prohibit this.

Normally, when it believes that a mark is likely to be perceived as a normal trade mark, rather than as a certification or collective mark.

GREEN

You have almost reached the end of this Module. Before you move on to the quiz, make a note of any points you would like to discuss with your trainer.

We recommend that you make a list of any organisations you can think of that might benefit from the provisions for registering certification and collective marks. In particular, if your office has a trade marks practice, you could think about any clients you are aware of who could benefit. And if your office has dealt with collective and/or certification mark applications, ask if you can see the files.

Now try the quiz.

GREEN

Test Yourself

Which parts of the Trade Marks Act 1994 deal with certification marks?

Which parts of the Trade Marks Act 1994 deal with collective marks?

On what grounds, in addition to those provided by section 46 of the Act, can a certification mark be revoked?

Are there any restrictions on who can own a certification mark?

Will the Trade Marks Registry act on any disputes where the owner of a certification mark refuses to allow someone to use it?

Would the mark CAMBODIAN SILK be accepted by the Trade Marks Registry as a certification mark?

GREEN

The answers.

Section 50 and Schedule 2.

Section 49 and Schedule 1.

The additional grounds are provided by paragraph 15 of Schedule 2. They are that: The proprietor has begun to carry on a business involving the supply of the relevant goods or services. The manner in which the proprietor has used the mark has become misleading to the public - particularly where the mark is likely to be seen as something other than a certification mark. The proprietor has not observed the regulations or has failed to enforce them. Amendments made to the regulations mean that they no longer conform with the requirements of paragraph 6(2),or have become contrary to public policy or morality. The proprietor has ceased to be competent to certify the goods or services.

No, other than that it can not be someone who is carrying on the business of supplying the goods or services in question.

No – there should be an independent arbitrator.

Only “if the applicant can establish that the geographical name is capable of distinguishing the goods… of members of the applicant association”. In practice, it seems unlikely that this one would be accepted – this seems to be purely an indication of geographical origin.

TAN

TAN MODULE

The Relationship between Trade Marks and Domain Names

TAN

In this short Module, we take a look at Internet and Domain names, in a trade mark context.

To complete this Module, you will need Internet access Trade Mark Handbook, chapter 106

When you have completed this Module, you will have: Explored some important websites Stated how to register a domain name ending in .uk Read about recent developments in domain name disputes Identified circumstances where you might advise a client to go to court, rather than use dispute resolution procedures.

This Module will take approximately half a day to complete.

TAN

Terms used

Please start by reading section 106-002 and 106-003 of chapter 106 of the Trade Mark Handbook. This gives some basic definitions of terms we use in this context.

Trade marks and domain names In theory any trade mark can, in principle, be used as a domain name or part of one, just as a trade mark may be the trading name of a business or part of a company name. (However, as you have now seen, this may not be so straightforward in practice.) As an example, the trade mark TRAWLER is registered in respect of office requisites by your client, the company Trawler (UK) Limited. The company uses the domain name trawler.co.uk. So, in this example, if you were to enter trawler.co.uk into your search engine, you would find the company’s website, with all the information it wanted to make available to the public by this means.

V Think about this for a moment. What does this actually mean? Although there is a clear relationship between the trade mark TRAWLER, and the domain name, the domain name is really acting as an address, albeit an electronic one, to enable you to contact the company by electronic means, rather than using a telephone number or postal address.

TAN What relationship does an electronic address bear to a trade mark? Although we just said that a domain name is best considered as an address, you will probably already be aware that there are circumstances where a third party is deliberately misusing a domain name very similar to someone’s trade mark, with intentions that are fraudulent.

We will look further at our example of the trade mark TRAWLER. The company’s competitor, Officestuff Ltd, has registered trawler-uk.co.uk as a domain name. Anyone looking on the Internet for Trawler (UK) Limited could well assume, if they found this website, that they had located one for that company – but instead they will find Officestuff’s online catalogue. Officestuff Ltd can register this confusingly similar domain name with Nominet UK because Nominet does not carry out searches for conflicting names. (We will learn more about Nominet UK shortly.) Registration of domain names is done on a “Firstcome, first-served” basis.

What can you do if a client finds that someone else is using their trade mark as a domain name? If one of your clients finds themselves in a situation similar to our example, then they can in fact take action, depending on the circumstances, under Trade mark infringement (as discussed in the White Module) Passing-off (see the Yellow Module) The Nominet alternative dispute resolution service. There is more information in paragraphs 106-028 to 106-032 of the Trade Mark Handbook. Please make a note to read this when you have worked through this Module.

TAN

Please go to www.ipo.gov.uk/tmmanual-chap3-exam.pdf, to read section 28 of chapter 3 of the Trade Marks Registry Work Manual.

Now try this short exercise.

Your client, Joe Gateau, has registered his trade mark CREAMCAKE for stationery at the UK Trade Marks Registry. He has now commissioned someone to design his website, and assumes there will be no problem with using CREAMCAKE in his domain name. What do you tell him?

Your client finds that someone is using creamcake.co.uk as a domain name, albeit for selling birthday cakes, rather than stationery, over the Internet. Is there anything he can do?

Another of your clients, Alison Prince, has been trading for a short while as PRINTS’N’PINAFORES, selling children’s clothes under this mark. She has also registered it as part of her web site address, and now wants to register it as a trade mark. Will the Trade Marks Registry accept the domain name registration as evidence of the registrability of the trade mark?

Now check your answers.

TAN

How did you get on?

You should explain that ownership of a registered trade mark does not mean that the same name is necessarily available as a domain name, and that this needs to be searched as a separate issue.

Your client could try contacting the Nominet UK dispute service. However, the domain name registration appears to be in good faith, and the goods are different, so your client may have to be even more creative with his domain name.

No – the Trade Marks Registry will still apply its normal examination criteria.

Next, you will spend a little more time looking at relevant information on the Internet.

TAN Nominet UK

Go to www.nic.uk, and spend some time exploring the site, and familiarising yourself with what it has to offer. Then take a look at www.nic.uk/disputes/. (As you will remember, we talked about disputes a little earlier.

Now please read paras 106-028 to 106-032 of chapter 106 of the Trade Mark Handbook.

What is cybersquatting? “Cybersquatting” is the act of registering a trade mark as a domain name by someone who is not its true owner, and then attempting to sell the domain name to the trade mark’s legitimate owner. This had become more difficult since the One in a Million case (Marks & Spencer plc v One-in-a Million plc; Ladbroke plc v same; J. Sainsbury plc v same; Virgin Enterprises Ltd v same; British Telecommunications plc v same [1998] FSR 265), and it is less common than it was a few years ago.

TAN

What is ICANN? This is the Internet Corporation for Assigned Names and Numbers. It is based in the US, but is an international, non-profit-making organisation dealing with matters of Internet Protocol, including address allocation. It has taken over responsibility from earlier organisations in this area. ICANN procedures take about two months.

Please read paragraph 106-027 of the Trade Mark Handbook, which deals with ICANN and its dispute resolution procedure.

WIPO International (cross-border) domain name disputes are dealt with by WIPO.

Please go to http://arbiter.wipo.int/domains/.

Click on Domain Name Dispute Resolution Resources. Spend some time exploring the site and familiarising yourself with what WIPO does in this context.

TAN

You have almost reached the end of this Module.

As always, spend a few minutes reviewing what you have learned, and making notes of anything you would like to discuss later.

Now try the quiz.

TAN

Test yourself

Does the UK Trade Marks Registry deal with the registration of domain names in the country?

Think about the services offered by Nominet UK in resolving disputes. What, specifically, can it not do?

What is “cybersquatting”?

Your client, based in the Republic of Ireland, is Mr John Flower, and his trade mark is SUNFLOWER, used in respect of animal feedstuffs. The products are distributed in the UK by a licensee. Mr Flower has discovered that the licensee is now selling the SUNFLOWER feedstuffs over the Internet, and to do this, has registered the domain name sunflower.com. Can your client take action to have the domain name transferred using the ICANN procedure on the grounds of bad faith?

In addition to the trade mark SUNFLOWER, your client has also used the mark DAISY for animal feeds, and himself registered daisy.com as a domain name. However, Mr Flower has decided to drop this mark to concentrate on his more successful SUNFLOWER range and no longer wants to keep the domain name. He has discovered that an English company is marketing cattlefeed under the trade mark DAISY and has registered the name as a trade mark. He wants to offer to sell the domain name to them. If he does this, does the English company have grounds for complaint to ICANN and is he likely to be subject to a forcible transfer of the name to the English company on the grounds of bad faith?

Now check your answers.

TAN

The answers.

1. No. (You can register a domain name ending in .uk by applying to Nominet UK.

It cannot transfer a domain name without the consent of the person who has registered it, or a court order offer legal advice make judgments concerning possible infringement of the rights of third parties.

The act of registering a trade mark as a domain name, and then attempting to sell the domain name to the trade mark’s legitimate owner.

As the distributor is selling the genuine SUNFLOWER products, this could be difficult, particularly if it was acting in good faith.

As your client registered the domain name in good faith, and provided he can show this (for example, by demonstrating, if necessary, that at the time of the domain name registration he was using the trade mark DAISY for his products), merely offering to sell the domain name should not constitute bad faith.

Sources W.R. Cornish, Intellectual Property, Sweet & Maxwell. Lionel Bently and Brad Sherman, Intellectual Property Law, Oxford University Press. SAEGIS™ by Thomson CompuMark. United Kingdom Trade Mark Handbook. Chartered Institute of Patent Attorneys & Institute of Trade Mark Agents. Ed. Tibor Z. Gold &Mark Hiddleston. London, Sweet and Maxwell 1991 (and subsequent releases). The UK Intellectual Property Office website . The WIPO website. The Nominet UK website. The Wikipedia website. Anti-counterfeiting A Practical Guide. Anthea Worsdall and Andrew Clark. Jordan Publishing Ltd 1998. The Trade Marks Act 1994 Text and Commentary. David Kitchin QC and James Mellor. Sweet & Maxwell. 1995.

Commercial Exploitation of Intellectual Property. Hilary Pearson & Clifford Miller. Blackstone Press Limited. 1990. Learning the Law. Glanville Williams. Stevens & Sons. 1982.

An Introductory Guide to EEC Competition Law & Practice. Valentine Korah. ESC Publishing. 1986 (and subsequent editions). Guide to the International Registration of Marks Under the Madrid Agreement and Madrid Protocol. WIPO. Geneva. The Modern Law of Trade Marks. Morcom, Roughton and Graham. Butterworths. February 2000. . Kerly on Trade Marks. 14th Edition. Eds, Sir Robin Jacobs QC, David Kitchin, James Mellor, Richard Mead, Thomas Moody-Stewart and David Llewellyn. Sweet and Maxwell. December 2005.