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In a recent post we looked at a consultation from the UKIPO which was proposing superfast patent processing. That’s not the only consultation that is running at the UKIPO and there is a further one entitled “Fast Track Opposition Procedure. Trade Mark Tribunal”. This consultation is running until 17 May 2013 and seeks the views of users and potential users of the UK national registration system about the introduction of a lower cost “fast track” opposition based on earlier registered or pending marks.
As noted in the consultation a fast track opposition process may differ from the existing procedures in a number of ways, namely:
- Lower opposition fee
- Grounds limited to s.5(1)/5(2)
- Limit to the number of earlier marks that can be relied upon
- If over 5 years old, proof of use to be filed with the notice of opposition using a pro-forma statement with exhibits
- Leave required for either party to file any further evidence
- Decisions normally from the papers
- Introduction of refundable appeal fee large enough to discourage frivolous appeals
The full reasoning behind the above proposals can be found in the consultation document but a few issues with the proposals, as highlighted by our trade mark team, are noted below:
In the film Iron Man 2, Tony Stark (Robert Downey Jr) gets into an argument with his friend Lt. Col. James “Rhodey” Rhodes (Don Cheadle) who, after a bout of CGI enhanced fighting, makes off with one of his Iron Man suits.
Shortly after this, Pepper Potts (Gwyneth Paltrow) who is CEO of Stark Industries is seen berating someone on the telephone about the suit that has gone missing. During the call she says the following (as near as I recall):
“Illegal seizure of trademarked property”
“Don’t tell me we have the best patent lawyers in the country and then not pursue this”
So, what’s wrong with these statements? (Other than the fact I picked up on them and thought to write an article about it!).
The press has widely reported the launch of the new generic top-level domains (gTLDs) which can include a geographic location (e.g. NYC), a generic term (e.g. Music) or a mark (Ralphlauren). Nearly 2000 applications should be added this year to the currently available gTLDs (.com, .net) and country code top-level domains (ccTLDs, e.g. geographical location .uk, .eu). The examination of hundreds of candidates revealed last year (see article in the Figaro blog here) the avid appetite of Amazon and Google for new extensions who spent millions to request 101 and 76 Internet extensions respectively revolving around digital content and media issues.
This is considered one of the most important changes in the structure of the Internet for years. A symbiosis has to be found to regulate the protection of trade mark owners and their Intellectual Property rights.
In this respect, The Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for the management of the top-level domain name space, has established a rights protection system through the creation of a database, called the Trademark Clearinghouse (TMCH), for names that are the subject of a prior registration. The Trademark Clearinghouse has been available since 26 March.
Proposals for reformed legislation, which have been drafted in order to help modernise and further synchronise the European Trade Mark system, have surfaced on the web. The European Commission has indicated that the reform package will ‘foster innovation and economic growth’ throughout the EU as well as ‘ensure coexistence and complementarity’ throughout the trade mark systems. Further, the European Commission has stated that the reform ‘will be beneficial for applicants and owners of both the Community Trade Marks (‘CTMs’) and national trade marks’ by increasing the efficiency of the EU internal market. Further, regardless of the size, market and geographical influence of an entity, the proposals will aim to create a more level playing field.
Once the proposals have been adopted (potentially Spring 2014) the Commission advise that EU countries will have to implement the new rules of the Directive into national law within two years. With regard to the Regulation, most amendments will become effective when it is enforced. However, the Fees Regulation will require prior authorisation by the Committee on OHIM fees with the aim of adopting it before the end of 2013. Below is an overview of some of the proposals. Please note that these proposals are not official.
Trade Mark squatting is big business in China and is becoming more and more common. The new target appears to be up and coming European brands. It would appear that as soon as a mark becomes the slightest bit known in the UK, throughout Europe or the US, the marks are being filed as trade mark applications in China by opportunistic third parties known as trade mark squatters.
It would also seem that these third parties are not just trying to reap the rewards of just one trade mark either. It is becoming more common for trade mark squatters (which are now large ‘squatting’ companies) to file hundreds of well-known or well-publicised up and coming brands belonging to foreign owners.
“A registered trade mark is not infringed by use of another registered trade mark for goods or services for which the latter is registered (…)”(s.11(1)). This section of the UK Trade Marks Act 1994 (also referred to as “registered mark defence”) has generally been the basis for advising clients to obtain a UK trade mark registration in addition to a Community Trade Mark (‘CTM’) registration.
UK trade mark proprietors have been able to rely on the registered mark defence mentioned above as a prima facie defence to trade mark infringement proceedings. Prior to the EU decision below, the validity of a UK registered mark would have to be challenged first before infringement proceedings commenced. It would appear from the EUCJ ruling below that there may be a movement away from this defence.
On 18 December 2012, the Regional Court of Cologne decided that Swiss Confectioner Lindt’s gold foiled teddy amounted to a visual representation of German sweet maker Haribo’s famous Gold Bear.
The court held that the visual similarities would cause connotations with Haribo’s bears and upheld Haribo’s claim against the distribution of Lindt’s bears in Germany.
In the case, Haribo argued that its bears and its word trade mark for ‘Goldbär’ (German for gold bear) was known to 95% of the relevant German consumer. Lindt argued that the gold foil and red ribbon followed the form used on its chocolate bunnies and invited the court to find that the competing products did not look similar and that consumers would not be confused.
However, the courts agreed with Haribo’s view and said that consumers would refer to Lindt’s bear as the ‘gold bear’ due to its visual appearance. They held that this would result in a dilution of Haribo’s rights.
The courts have allowed an appeal on the basis that there has so far been no ruling by the German Federal Supreme Court on the question of a conflict between a word mark and a three-dimensional product design.
Lindt have appealed the decision to a higher court and a decision is expected soon.
Azhar Sadique 8 February 2013
The Hobbit studios Warner Bros., New Line Cinema, MGM and producer Saul Zaentz have moved to block the further circulation of Global Asylum’s recently-released Age of the Hobbits film by filing a lawsuit in the U.S. District Court.
Despite including a disclaimer within the strapline of its film (“They’re not Tolkien’s Hobbits… They’re Real”), Asylum have been accused of “…promoting and advertising its low-budget film using the confusingly similar and misleading title Age of the Hobbits, in an intentional and willful attempt (i) to trade on the popularity and goodwill associated with the Tolkien novels, the extraordinarily successful Lord of The Rings film trilogy, and the famous HOBBIT mark, (ii) to free-ride on the worldwide advertising campaign in connection with the forthcoming Hobbit films, and (iii) to divert customers and potential customers away from the Hobbit films”.
On 1 July 2013, Croatia will join the European Union with the result that, from that date, existing and new Community Trade Marks (CTMs), as well as unregistered and Registered Community Designs, will have their coverage expanded to that country.
This expansion of protection will occur automatically, without the need for owners of CTMs and Community Designs to take any action, nor pay any fees.
HMV has become the latest high street victim to collapse into administration after 92 years on UK high streets. More than 4000 jobs and 236 stores are at risk unless a suitable buyer can be found by administrators. This news comes just days after camera retailer Jessops announced that it was unable to continue trading. As a result, all of its 187 stores were closed down. The company stated in 1937 when Frank Jessop opened his first shop in Leicester. Both HMV and the Jessops trade marks have been well known to the public following many years of use …. but what will become of the names now and can the trade marks be saved by anyone?