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Thursday, 19 July 2007

Relative grounds consultation - this time it's law

On 10 July, the Trade Marks (Relative Grounds) Order 2007 was passed. It enters into force on 1 October 2007.

The order follows extensive consultation by what used to be the Patent Office, and will mean that trade mark examiners will no longer prevent marks from being registered under the relative grounds unless the proprietor(s) of the earlier conflicting marks object to the registration.

The IPKat reckons there’s a loose end knocking about here. Under s.11(1) of the Trade Marks Act 1994, use of a trade mark for the goods for which it is registered cannot infringe. The IPKat has always assumed that this was essentially the Registrar indemnifying trade mark owners that any trade mark granted by the Registry was safe to use. How can the Registrar continue to make this guarantee if he no longer checks applications out for conflicts with earlier marks?

7 comments:

Michalis Kosmopoulos said...

Dear Ilanah,

Pretty much the same problem is being discussed in Greece. The Greek Trademarks Act provides that the Trademarks Committee ex officio checks for earlier rights. However, a revised act is being prepared under which this ex officio check will no longer be done.

Subsequently the revised act will provide that even if a trade mark is registered, it does not grant the right to exclusive use, i.e. its use may be prohibited through a civil action.

It seems that, if these amendments pass, the trade mark registry will become a list where someone 'declares' the mark he uses ...

Anonymous said...

Ah yes but the registrar will continue to search the register for earlier marks and notify those who may have an interest. They, or anyone else who keeps a wary eye on the journal, can then oppose.

Marks can therefore still be refused on relative grounds prior to registration.

On that basis, would you still say that there can no longer be any justification for section 11(1) ?

I can't imagine all those clever people at the registry and their legal advisers would miss something like this...

Anonymous said...

But of course owners of prior CTM rights will not be informed of such applications unless they 'opt-in' to the notification system at a cost of 200 pounds. The CTM Regulation has no comparable article to Section to 11(1) and I recall it was specifically requested to be inserted into the 1994 Act when it was originally paased as a further support to the 'purity' of the UK Trade Marks system. Now the Act will be less pure and more conflicting rights will inevitably subsist on the Register which ultimately will have to sorted out in the courts, Section 11(1) will have to go? otherwise you are going to get lots of defence based on this slightly less than firmly founded section.

Anonymous said...

But s 11(1) is incompatible with the Trade Marks Directive anyway, so it's not going to help anyone in the long run.

Sally said...

The existence of s. 11(1) seems to mean that the owner of the earlier right will have to obtain revocation of the registration before having locus to apply for relief from infringement since it will operate to protect use of a (wrongly)registered mark from being an infringement. Only once the mark is revoked will there be an actionable infringement. I wonder how the impact statement has costed it.

Anonymous said...

s.11(1) refers to s.47(6) concerning the effect of invalidity.

If the mark is found invalid then it is deemed never to have been made.

There never was a guarantee because the TM Reg searches never were perfect, and fairly often marks are invalidated.

No guarantee existed before - no guarantee exists now. The only difference is the extent of that non-guarantee.

Anonymous said...

When my putative competitor applies for a trade mark which competes with my CTM, presumably I am better not to oppose immediately... but to wait until the cummulative consequences of my invalidity and infringement action will properly put my competitor out of business for good.

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