Trade mark law: Could procedures be improved?

Friday, 10th January 2014

This month, at a time when many people are wondering what changes 2014 will bring to their industry, Carl Steele reflects on those improvements he would most like to see made to trade mark law and procedure.

1.  We are all in this together

First (and most important) - more harmonisation between the different trade mark laws and procedures of all countries. Savings (in both time and money) could be made if more countries adopted the same trade mark laws and procedures.

Registering and enforcing trade marks on a worldwide basis is an expensive and time consuming process for businesses. For example, before you can file a trade mark application in some countries you must first file a Power of Attorney, which has to be notarised and legalised. Many other countries do not require this. It causes delay and increases costs, with no benefit to the client. 

Also, why is it that some countries allow trade mark oppositions to be made on certain legal grounds, while others do not? And why can''t trade mark offices around the world agree between them what terms they will and will not allow in a trade mark specification? I am (as are my clients) always frustrated by the fact that whilst one trade mark office might allow a certain specification of goods or services to be registered another will not, even though they all ought to be observing the Nice Classification system.

2. Wanting it all

Trade mark owners should only be able to register their trade marks for the precise goods and services that they actually use (or which they genuinely intend to use) their trade marks.

The present Community Trade Mark system allows brand owners to register their trade marks for goods and services in up to 3 classes for the same fee as for one class, encouraging brand owners to seek wider protection than they need.  The US has adopted a different system: one that forces trade mark owners to prove that they actually use their trade marks for the goods/services for which they wish to register their trade marks.  

3. Stop Misleading Brand Owners

Too many of my clients receive official looking letters from unofficial third parties asking for money to register or renew their trade marks.  Although I doubt that this practice will stop,  advertising watchdogs and other regulatory bodies need to take a much firmer line and crack down harder on these imposters.

4. Pointless Oppositions

The Community Trade Mark system (and many national trade mark systems) encourages the filing of weak oppositions.

First, OHIM''s formulaic approach to assessing whether there is "likelihood of confusion" between two trade marks and the goods/services for which they are registered means that, whilst there may be no actual confusion arising in the marketplace, there is still a chance that an opponent will succeed with an opposition. This results in trade mark owners having to spend time and money cutting deals with opponents, in order to achieve the commercial certainty that their trade marks will be registered.

Second, even if an opponent loses, the costs downside is not significant. Usually they will only pay the applicant the sum of €300, by way of a contribution towards its costs (which, in reality, will be higher than this).  If this sum is then not paid, the successful party has to seek judgment for this through the Court system.   

The solutions are straight forward.  If an opponent loses they should be forced to pay the winner a much higher sum by way of a costs contribution (which reflects closer the actual costs incurred in fighting opposition proceedings). Also, OHIM and the Courts should reappraise the "likelihood of confusion" test that is currently applied and properly consider the fundamental question - is there a real likelihood that a significant part of the relevant public will be confused between the two marks if they both operate in the marketplace?

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Carl Steele

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