12 September 2008

Trade Marks: No Names, No Pack Drill but here is a Success Story that shows how the Panel works.

Last Friday lunch time my manager received an urgent phone call from a gentleman who had attended my Bradford IP clinic and an IP awareness talk at the Bradford Chamber of Commerce.    He had applied to register his own UK trade mark and the application had been published in June.   The deadline for opposition was this Monday.  Just before 13:00 he had received a letter from a London trade mark attorney in the following terms:
"We act on behalf of AB SA. of Spain. Our client is the proprietor of Community Trade Mark Registrations Nos. .................. and ............. copies of which are enclosed.

Our client has noticed your UK trade mark application, above, for the mark XYZ in respect of “Clothing and clothing accessories” in class 25 and “Retail services connected with the sale of foodstuffs and beverages” in class 35. As you can see, our client’s registrations cover a mark – SYZ – which will be pronounced identically to yours and which is registered for identical or similar goods in classes 25 and 35. This gives our client a good basis to object to your application.

Our client therefore requests that you limit your UK application to exclude classes 25 and 35. Failing that, our client will have to file Opposition by the deadline of 6 September 2008, i.e. Monday. Please note that if an Opposition is successful then costs are awarded by the Registry on a standard scale.

We hope that it will be possible to resolve this without resorting to Opposition, and look forward to hearing from you."
On returning from lunch I called the client immediately and looked through the papers.   I formed the view that there was insufficient similarity between the Community trade mark and my client's mark. In a brief email I advised him of the provisions of s.5 (2) of the Trade Marks Act 1994 and that there was no need to withdraw the application.   I added:
"Now I could draft a letter for you to send back to [the trade mark attorneys] to that effect but I think you should instruct a patent or trade mark agent to send it on your behalf.    The reason I say that is that trade mark oppositions can beocme quite difficult and [the trade mark attorneys] may be encouraged to push their luck with you if they think you are unrepresented.   Many unrepresented parties make mistakes in such proceedings. Consequently patent agents often persist with weak cases in the hope that the other side will make an error."
I introduced my client to all 4 patent and trade mark agents on the NIPC panel (3 of whom are from Yorkshire and one, Barbara Cookson, from London) adding
"Although all 4 agents are probably equally good, Barbara has the advantage of being in London which means that she will be within walking distance of the UK-IPO if she has to attend a hearing whereas the others would have to travel from Yorkshire and would charge you for their time and expenses."
Brabara was on the train from Yorkshire when I called her and she responded immediately.   She contacted the other side first thing on Monday morning and offered them a deal that limited the application in respect of the one class of goods that was important to them but of no immediate importance to us.   There was a delay in the other side's obtaining instructions so an opposition was filed but I am glad to say that the deal was settled.

The client was delighted: "It is great news", he said in an email Barbara adding "thank you for being so wonderful in handling this opposition so well. Your email..... was well constructed and firm and they must have seen no grounds of opposition after they read that.  In a PS to me he said "Thank you Jane for placing me in exceptionally capable hands with Barbara."   Well, that's how the NIPC IP Yorkshire Panel works, folks.

PS Barbara and I have just had some really nice commendatory emails, see "Trade Marks: A Very Satisfied Client".