Jane Lambert
Last updated 24 Feb
2004
This
case note originally appeared on the NIPCLAW website
This article introduces some of the
excellent materials that are already published on the internet by the
Patent Office,
Chartered Institute of Patent Agents
("CIPA") and
Institute of Trade Mark Attorneys ("ITMA").
It also addresses some of the issues that brand owners should consider
when contemplating trade mark registration. However, it is not intended
to be a guide in itself.
Need
for Professional Advice
The first point to stress is that this is not a straightforward area of
the law. Though professional representation is not compulsory, it is
strongly recommended. The obvious source of such assistance is a patent
or trade mark attorney. A local patent or trade mark attorney can be
found from the CIPA or ITMA websites.
If a
hearing before a Patent Office tribunal or court is necessary, it is
worth considering a specialist advocate. Patent and trade
mark attorneys frequently argue cases before courts and tribunals and
most do so very well, but they are not specialist advocates and have no
training or experience of the general law. For complex or
tricky cases it pays to instruct patent counsel or a
solicitor advocate with substantial experience of intellectual property advocacy. Such advocates can,
of course, also advise on the prospects of success at a
hearing.
Search and Advisory Service
A pretty good idea of whether an application to register a mark in the
UK would succeed can be obtained from a Patent Office search. The service costs
£80 is usually completed within a
few days. Particulars of the service are available in the leaflet
"Trade Marks Search and Advisory
Service" which may be downloaded from the Patent Office
website.
National, EC or International Registration
Unless the application originates overseas, one of the first issues for
a brand owner is whether protection is required for the UK alone, the UK
and one or more other EC countries or EC and one or more other countries
around the world. If protection for the UK alone is required, an
application may be made to the
Trade Marks Registry of
the Patent Office ("The Registry"). If protection is required
throughout the EC, an application should be made to
OHIM for a CTM. if
protection outside Europe is required an international application may
be made to the Patent Office or OHIM for forwarding to WIPO under the
Madrid Protocol.
Applications to
the Registry
A good introduction to the practice of the Registry is the
booklet
"Applying to register a Trade Mark".
As has already been noted, the basic principles of English trade marks
law are set out in the
Trade Marks Act 1994.
These are amplified and applied by the
Trade Marks Rules 2000 as
amended and as interpreted by decisions of Patent Office tribunals and
the courts. The Act implements
Council Directive 89/104/EEC ("Trade
Marks Directive"). It is therefore necessary to refer to
the Directive from time to time as well as to decisions on its meaning
of the European Court. The Patent Office helpfully lists most of those
decisions on the Trade Mark Decisions page of its website. It also
tracks appeals and preliminary references to the Court in all
intellectual property cases elsewhere on its site. The practice adopted
by the Registry is set out in its
Work Manual and in
Practice Amendment Notices
which are also on its website.
Applications to OHIM
Probably the best starting point for British applicants is the
"European Route" page
on the Patent Office website. The Office also publishes an excellent
booklet
"Applying for a Community Trade
Mark". There is also plenty of useful material in English in
the "Community Trade Mark" index of the OHIM site. It will be recalled
that the primary legislation is the
Community Trade Mark Regulation
(Council Regulation (EC) No 40/94 of 20 December 1993 on the Community
trade mark) and that this Regulation is implemented by various
Commission Regulations helpfully set out on the Regulations page of
OHIM's website. The Regulation follows closely the structure and
language of the Directive and therefore decisions of the European Court
on the Directive generally apply to the Regulation and vice versa. The
other case law of which to take into account are decisions of the Office
including, in particular, those of the Boards of Appeal.
International Applications
Again there is a useful Patent Office booklet,
"Applying for an International Trade
Mark." The
"International Route" page of the Patent Office website links
to pages on the WIPO site showing the countries that are party to the
Madrid protocol, the fees payable and full details of the Madrid system.
Examination
Examination is the process of checking whether an application complies
with the conditions for registration. In the UK it is carried out by the
Patent Office and for CTMs by OHIM. Those conditions are broadly the
same for national and Community trade marks. They are summarized
conveniently on the Patent Office
"Examination Report"
page.
Objections in the
UK
If there is an objection to an application in the UK its nature is
explained and the applicant is given an opportunity of address the
problem. Should the objection be maintained the applicant can seek an
"ex parte" hearing before a hearing officer, the procedure for which is
set out in the
"Trade Marks Hearings" page
of the Patent Office website. The Registry's Practice
Amendment Notes , Law Practice Directions and Tribunal Practice Notices
should be checked before any hearing. Particularly useful are Practice
Amendment Circular 1/01 "The Conduct of ex Parte Hearings" and Tribunal
Practice Notice 1/2001 "Trade Mark Hearings". Previous decisions of
hearing officers are reported and can be accessed through the "Trade
Marks Decisions" page of the Patent Office website.
Objections at
OHIM
OHIM publishes its "Examination Guidelines" on its website. Appeals lie
from examiners' decisions to a Board of Appeal and decisions of the
Boards of Appeal may be challenged by proceedings before the Court of
First Instance of the European Court.
Publication
If no objection is made to the application or the objection is satisfied
the application will be published in the Trade Marks Journal, in the
case of a national application, or the Community Trade Marks Bulletin in
the case of a CTM application so that members of the public may consider
it.
Third party Observations or Opposition
Those who object to an application have the choice of making informal observations under s.38 (3) of the Trade Marks Act 1994 or art 41 of the CTM Regulation to prompt further examination or opposing it formally (see "Third Party Observations" on the Patent Office site and paragraph 10 of the Examination Guidelines on OHIM's).
Opposition
Anybody thinking of opposing a trade marks application should read the "Guidance Notes for Opposition Proceedings in the Trade Marks Registry" or OHIM's "Opposition Proceedings" guidelines as the case may require. The most significant difference between informal observations and formal opposition is that the opponent becomes party to the process and risks contributing to the applicant's costs should the challenge fail. Both the Registry and OHIM encourage the applicant and opponent to try to resolve their differences amicably. If that fails the parties are required to set out their grounds and exchange statements of case and evidence in accordance with a strict timetable for determination by a hearing officer, in the case of a national application, or the Opposition Division in OHIM. Opposition proceedings are known as "inter partes" proceedings in the Registry and decisions in such proceedings are reported on the "Trade Marks Hearings" page. The notes, directions and notices referred to above should be consulted before proceeding to hearing.
Appeals
Appeals from hearing
officers lie either to an "appointed person" (usually a patent silk or
other distinguished academic or lawyer) or to a judge of the Chancery
Division of the High Court in England or Wales or Northern Ireland or a
judge of the Outer House of the Court of Session in Scotland. Appeals
from the Opposition Division lie to the Boards of Appeal whose decisions
may be reviewed by the Court of First Instance.
Grant
Absent any objection or opposition or if all proceedings are resolved in favour of the applicant, the application proceeds to grant. At that point, the mark applied for is entered on the register and a certificate of registration is issued.
Articles
Jane Lambert The Trade Marks Act 1994
Jane Lambert The Trade
Marks Rules 2000
3 May 2000
Jane Lambert Community
Trade Marks
9 April 2003
Important
