The intellectual property profession is notoriously unforgiving when it comes to deadlines.
Missing one, even by a day, can result in key rights being revoked. This is of course inconvenient, and sometimes very damaging, for the rights owner, but spare a thought too for the external counsel.
The issue was brought to my attention this week after law firm CMS, which is acting for Nestlé in a UKIPO trademark dispute concerning the Crunch chocolate bar, was told the Swiss multinational’s UK trademark risks being revoked because the firm missed the deadline for filing a key document by around nine hours.
CMS has until March 7 to tell the UKIPO why it did so and why the trademark in question should not be revoked.
In a letter to the firm, seen by Managing IP, the UKIPO said that as CMS had not filed a counterstatement to a revocation action within the set time frame, Rule 38(6) of the Trade Mark Rules 2008 should apply. That rule states that a mark shall be revoked unless the registrar directs otherwise.
The reasons for the missed deadline will likely remain unclear until March 7, but the firm has rowed back on early excuses of an IT failure.
I suppose you could say rules are rules and the form simply should have been sent on time. But there are a few factors to consider here.
It’s probably for another article to consider whether IP rights should automatically lapse just because a response was filed a matter of hours after a deadline.
I happen to think it seems harsh, but I suppose there must be a hard stop at some point otherwise proceedings could theoretically drag on.
Pressure cooker
What’s perhaps the key issue is what led to the missed deadline in the first place.
We often hear that lawyers, particularly those at the junior level, are acting under enormous strain.
In 2022, a survey showed that around 50% of people were considering leaving their firm or the profession because of stress and anxiety, while in 2023 another survey revealed that juniors at major firms were working 10-hour days on average.
Deadlines play a big role in this stress.
In the Nestlé case, I don’t know the specific circumstances; more will likely come out on March 7.
But the lawyer in question, who is an associate, could well have been facing a mountain of work and simply got their days muddled up. The case could have been just one among multiple deadlines piling up for the associate.
If so, or if some other unforeseen event had occurred, you would hope CMS would take a measured response.
It’s also worth considering how much oversight there was from more senior team members.
You would think the firm would have ensured that at least one senior lawyer or partner was heavily involved in the case, particularly with a major client like Nestlé.
If anything, a senior team member’s involvement would have ensured that responsibility did not fall on just one junior lawyer.
The level of oversight is another factor that may well be revealed by March 7.
Stepping up
But while we wait, some actions can be taken.
If firms are to be believed about taking the mental health of their employees seriously then CMS should ensure that this mistake does not cost the lawyer dearly.
Of course, I’m not party to the internal discussions that will be going on, and the firm may well have provided those assurances already, but this should perhaps serve as a reminder that when under pressure, mistakes can happen.
It’s a blow for Nestlé, which is also facing cancellation actions regarding the ‘Crunch’ mark in other countries, but the company may wish to look at the bigger picture.
To my knowledge, the UK is the only jurisdiction in which a document has been filed post-deadline. Who knows? Maybe even the UK arm of the dispute will resolve itself.
But for now, perhaps we should consider (yet again) if there is too much strain on our junior lawyers.
