Over the years, an attorney acting for clients with international trade mark portfolios gradually becomes familiar with the various registration procedures in operation around the world.
Some of the more arcane practices which were in effect 30 years ago have, sadly, disappeared; companies seeking to register in the UK a mark that includes a coat of arms no longer need to submit a written description in heraldic terms – bar sinister gules on a field of azure with a lyon couchant argent, anyone?
Nevertheless, variations in trade mark systems around the world still provide an array of possibilities to consider in putting together the best possible registration system.
One premise of trade mark registration is that the applicant must define the range of goods or services over which it claims rights. In most jurisdictions, this is done using the sometimes obscure language of the Nice Classification, which classifies goods and services for the purpose of calculating the fees an applicant has to pay when seeking to register a mark.
"Bar sinister gules on a field of azure with a lyon couchant argent, anyone?"
However, in the US and Canada, there is a positive requirement that goods and services be described using normal commercial terms. Both systems have their faults; on the one hand it is not clear whether the Nice Classification term ‘small domestic utensils and containers’ covers kitchen chopping boards; on the other, the USPTO once asked us to specify, in connection with ‘power station ash for sale as a raw material for use in the manufacture of paint’, whether the paint in question was house paint or vehicle paint!
Both approaches are flawed but, on balance, I come down on the side of normal commercial terms. Trade marks are, after all, about business and businesspeople need to be able to understand what rights they and their competitors have without, I hesitate to say this, involving a team of lawyers.
So, once I’ve decided how to describe my products and filed my trade mark application, what should I expect from the Office which examines my application and decides whether or not to give me a registration?
At one extreme, there are the deposit systems still operating in a small number of countries - provided an application contains the correct information and is accompanied by the correct fee, a certificate of registration is issued without considering whether the nature of the mark might make registration inappropriate or whether someone else has already registered the same mark for the same products. Any difficult issues such as these are left for the courts to sort out later, should anyone ever bother to ask.
The advantages of a deposit system are low cost, speed and the fact that significant costs are only incurred where there is sufficient commercial interest in the mark to make it worthwhile litigating. This, of course, makes it cheaper for all those trade mark owners who never quite get their businesses off the ground for one reason or another.
"Trade marks are, after all, about business and businesspeople need to be able to understand what rights they and their competitors have without involving a team of lawyers"
At the other extreme is the situation we had in the United Kingdom prior to 1994; the Office acted as a guardian of the public interest, examining each application in minute detail and granting registration only when satisfied that there could be no possibility of anyone ever needing to use the mark in a descriptive sense, that no-one could possibly be misled or deceived by the mark and that that there is no existing mark to which it is confusingly similar.
Most offices around the world operate on systems somewhere between these two extremes. In Europe, the most obvious model is the Community office (OHIM), which examines marks to make sure that they are sufficiently distinctive for registration but leaves the question of confusion with existing trade marks to the owners of those earlier marks.
OHIM makes a search of existing Community registrations when an application for a new mark is filed. The owners of earlier marks similar to the new mark are notified when the new mark is published so that a formal opposition can be filed if the owner of an earlier mark thinks there is a real likelihood of confusion arising if the new mark is used alongside its own.
OHIM only checks earlier Community registrations not, for example, national rights like United Kingdom registrations which might be adversely affected by a new Community-wide right. Some jurisdictions do not notify trade mark owners about later, similar marks at all. So, the prudent trade mark owner makes sure that it carries out a watch with a view to catching any conflicting mark before it is registered.
Even though opposition-dependent systems make it necessary for trade mark owners to take responsibility for watching for later third-party applications, they still work well. Formal opposition proceedings are usually begun only where there is a real commercial issue to be addressed.
Having decided in favour of opposition-based systems, when in the registration process do I want third-party objections to come to light? Again, there are two models to consider. Most national offices publish a trade mark application and invite third-party oppositions only after all issues regarding the proper definition of goods and services and the objective suitability of the mark for registration have been settled.
Everyone who has ever filed a substantial number of trade mark applications will have had experience of spending years persuading the authorities that a mark is suitable for registration, only to have several parties oppose registration based on earlier rights at the end of a time-consuming and expensive official procedure.
"Everyone who has ever filed a substantial number of trade mark applications will have had experience of spending years persuading the authorities that a mark is suitable for registration, only to have several parties oppose registration based on earlier rights at the end of a time-consuming and expensive official procedure"
The alternative is to take a leaf out of the book of a number of Latin American jurisdictions and publish a trade mark application to give an opportunity for third party opposition at the beginning of the procedure. Any oppositions have then to be resolved alongside official queries about the mark but the applicant would know immediately what problems it faced and would be in a better position to decide whether it is worthwhile going ahead, before incurring significant expense.
Towards an ideal trade mark office
So, if I were in charge, this is how the trade mark offices of the world would operate
- Trade mark applications would describe goods and services using normal commercial terms
- Applications would be published immediately to allow third parties with grounds for doing so an opportunity to start opposition proceedings
- Applications would be examined by the Office only to see if they are offensive, descriptive or generic (any conflict with third-party marks being resolved by opposition)
- Opposition proceedings would run alongside the examination of an application by the Office
Last but not least, offices would be flexible about speed and deadlines – moving quickly when needed but prepared to allow matters to proceed slowly when the parties involved want them to, allowing applicants to negotiate sometimes complicated, multi-jurisdictional agreements without being backed into a corner by an office imposing unnecessary deadlines for purely organisational reasons. (Well, even a trade mark attorney can dream …)
Linda Harland is a consultant with Reddie & Grose in London
Do you agree with Linda’s view of how trade mark offices should operate? What harmonisation would you like to see? Please add your comments below.
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