Trade mark law changed yesterday morning. Given the importance
of brands, this development could be significant.
Businesses fight bitter battles to protect their brands. As you
read this, for example, Peter Brownlow, of the leading intellectual
property experts Bird & Bird, is acting for the Rugby Football
Union and the England team over a piece of ambush advertising that
appeared in a magazine during the World Cup.
But, whoever wins the rugby competition in France, UK enterprise
yesterday lost one of its traditional defences against potential
rip-off. In a nutshell, the UK Intellectual Property Office, which
has the responsibility for registering patents and trade marks,
will no longer refuse a new trade mark application on the ground
that it might pose a commercial conflict with an existing trade
mark. Instead, the UK IPO will examine UK trade marks on the basis
of “absolute” grounds only. This assesses whether they are
distinctive and fitting for a trade mark (so that, for example, a
company cannot be allowed to trade mark the name “soap” for soap)
but will not delve into whether there is an overlap with someone
else’s trademark. The responsibility for that, Brownlow explains,
lies with the existing owners.
For some intellectual property lawyers, this move represents a
profound dilution of the traditional strength and credibility of
the UK trademark system. Simon Smith, of Blake Lapthorn Tarlo
Lyons, says: “I feel very strongly about the changes. It’s a shame
and I’m really troubled by them. In the past a UK trade mark was a
designation of origin and was a form of consumer protection. Now,
though, it has been reduced to little more than a piece of
commercial property. It undermines the presumption of strength and
validity of the UK trade mark and that is going in the wrong
direction.”
But it is not only consumers who need to be concerned. Even more
so, maybe, should be established brand owners. Daniel Alexander,
QC, of the Chancery Bar Association, explains: “From [now on] trade
mark owners who want to prevent someone else from registering a
similar mark will have to take active steps to oppose registration.
They won’t be able to rely on the registry to do the job for
them.”
Mike Lynd, of the trade mark attorney Marks & Clerk, agrees
that the changes mean that businesses will need to be more vigilant
and more proactive to prevent new and similar trade marks being
registered in the UK. “Although existing UK trade mark holders will
be warned of a new trade mark application – which will give them
time to lodge an opposition – it is not yet clear how thorough this
service will be,” he says.
According to some lawyers, however, the “writing has been on the
wall for some time” about the demise of the copper-bottomed UK
trade mark. There is now, effectively competition for registrations
among the various national and international intellectual property
offices. In particular, the introduction of the Community Trade
Mark that prevails across all European Union member states gave
businesses coverage across more than 25 territories at one stroke.
However, investigations by the authorities into the validity of the
mark took account only of its capability of being registered. There
was no “relative” examination (that is, cross-checking for
conflict). And once that precedent had been set it was always going
to be difficult for the UK to adhere to its traditional
approach.
According to Sarah Wright, of Olswang, there was no way that the
Community Trade Mark registration process could have included the
“relative examination”. “Europe is just too big to make this
workable,” she says. “To remain competitive the UK IPO almost had
to follow suit.” And as Lynd observes, there was also a view among
some of the trademark bodies wondering “why should we be doing the
trademark owners’ work for them?”
Some businesses will believe that the slimmed-down service is a
significant advance – at least in the short term. “Overall, it
should speed up the process of trade mark registration,” says
Alexander, although the silk adds that it may lead to more
disputes.
Wright points out that the new approach will start to loosen up
clogging. “There are lots of ‘dead’ trademarks out there that are
not being used and unless they expire, the only way to remove them
is to seek revocation. Under the current system, these marks could
block a new trade mark. The reforms will help to free up the
system.”
By and large the bigger businesses will be able to cope with the
changes by employing watching services to check up on the weekly
TM Journal that lists all the new applications. However,
smaller and medium-sized businesses may suffer by lacking the
resources to remain vigilant against possible threats.
Moreover, we are only just at the start of a bigger challenge to
work out how trademarks can be protected on the internet. The grey
areas of law are considerable and all the signs are that the more
important trademarks become, the more owners will have to take
action to protect them.
Simon Smith is a partner in Blake
Lapthorn, and specialises in intellectual property,
competition and contract law.
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