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Saturday, 17 March 2007

Eyeing up the Patent Office

The IPKat has received a mysterious missive from the rather frighteningly named All Seeing Eye. The Eye writes:

The ever watchful Eye sees that the Patent Office's rebranding as the 'UK Intellectual Property Office' robs it of the protection offered by Section 112 of the Patents Act 1977 banning the use of the term 'Patent Office'. UKIPO has instead decided to try to protect the new name as a trade mark. Cunningly, it applied back in 2006. Had it waited until after the Gowers Review's unveiling it would have found itself in conflict with an application to bag the name made by the equally cunning Joshi & Welch LLP. 'One-Nil to the UKIPO!' you may think. But the All Seeing Eye is seeing red about the conflicts of interest this throws up:

Issue #1 UKIPO's mark is descriptive of a UK branch of an international IP firm - yet the mark has been accepted for publication as being inherently distinctive. The mark also unfairly covers third party 'publications' about practice before the UKIPO. Was the mark impartially and rigorously examined by the UKIPO examiner?

Issue #2. UKIPO was foolish to have conflated 'United Kingdom Intellectual Property Office' and 'UKIPO' into a single mark - as this gives Joshi & Welch a slim chance to argue that their mark - 'UKIPO' on its own - is dissimilar. Even if conflict is found, Joshi &Welch might counterattack the UKIPO's mark on distinctiveness grounds or on the basis of earlier unregistered rights. The UKIPO might conversely bring a bad faith action against Joshi & Welch. However, the All Seeing Eye cannot see how Joshi & Welch could get a fair hearing before UKIPO in any of these actions.

Issue #3 The UKIPO's specification makes the Eye blink with incredulity! Does the UKIPO genuinely intend to use the mark in the form depicted? No! Is the 'granting of intellectual property rights' really 'trade'? No! Are all the goods listed in Class 16 genuinely going to be 'used'? No! they look more like promotional media or goods for 'internal' use within the UKIPO. But it would be the UKIPO who would adjudicate on their own mark if 'use' were challenged five years hence.

This stinks so much that the Eye is watering! The Eye is all for protecting the name of the UKIPO given the number of 'registration fee' scams he sees. But Section 112 should have been amended. If this wasn't possible UKIPO should have opted for a CTM before the independent OHIM. The Eye looks with anticipation to your comments, IP Kat.
The IPKat sees the problem. However, he reckons that the plan all along has been to amend s.112 to cover the new name. In the long term therefore, others will be prevented from using UKIPO by one means or another. The IPKat would like to comment on the breadth of the Class 16 specification, but the register search facility is down for the night.

6 comments:

Guy said...

The Secretary of State for Trade and Industry only just beat the Gowers publication date when applying for his trade mark; application date 1st December 2006, Gowers publication 6th December 2006. There was probably insider knowledge. Section 112 prevents confusion. In Germany there is no equivalent legal provision. A few doors away from the European Patent Office branch in Berlin there is a popular bar called "Patentampt".

Johanna said...

Potentially more problematic is Section 64(1) of the 1907 Patents and Designs Act (which is one of the few provisions still to be in force.

Under Section 64(1), "The Treasury may continue to provide for the purposes of the Patents Act 1977, the Registered Designs Act 1949 and the Trade Marks Act 1994, an office with all requisite buildings and conveniences, which shall be called, and is in this Act referred to as, the Patent Office."

As it is a statutory requirement that the office "shall be called ... the Patent Office," there is obviously quite a lot in a name. In all likelihood this will be amended, but how that might be possible in 3 weeks is the question.

Loz said...

Come now, there's no reason to suspect that UKIPO would be anything less than fair and balanced in assessing its own application! Word on the Australasian IP street a couple of years back was that IPONZ had rejected its own application for its name on the basis that it had no intention to use the mark as a trade mark (probably one of the few occasions where lack of intention to use could have been authoritatively demonstrated, given that IPONZ presumably knows its own mind). Of course, it could have been vicious trans-Tasman rumour.

Gerontius said...

Here's another all seeing eye in IP...

http://v3.espacenet.com/origdoc?DB=EPODOC&IDX=WO2007011108

David said...

That's really disturbing, Gerontius. There are some seriously weird people out there.

Peter Groves said...

I noticed just now that the Joshi & Welch application was witdrawn on 15 May. What a shame!

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