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A brand is a valuable asset that needs to be protected.
Even brands that are registered may still experience problems with conflicting
trade marks from time to time. Brand confusion can adversely affect customer
satisfaction and profits or could even cause the loss of a particular market share.
If a potentially damaging mark is detected early enough, action can be taken to
stop its registration. This is called 'opposition' and changes to opposition
procedures came into force on 5th May 2004.
Changes to Opposition
The new opposition procedures are now more accessible to brand
owners who, for cost reasons, have shied away from challenging marks they consider
to be too close to theirs. Whilst the cost of filing an opposition is £200, the
added costs of preparing evidence without any clear indication of the likelihood
of success have, until now, been a deterrent.
Equally, if a company is on the receiving end of an opposition,
the new rules mean that there is greater certainty as to whether or not the opposition
is justified and has been brought with good reason. Whether applying for,
or defending, a trade mark, companies can benefit by referring to their own 'document
bank' which contains examples of how the trade mark has been used since registration.
This helps to speed up the process of gathering necessary evidence at potentially
less cost.
What has changed?
A 'Statement of Use' is now required to be filed as part of
the opposition. This means that if an earlier trade mark has been registered
for five years or more at the date of publication of the opposed application,
the opponent will be required to state what specific goods or services the mark
has been used on or give the reasons for non-use.
Cooling Off Period
Parties are encouraged to enter into a 'cooling off' period
for up to a year after the opposition has been filed. This can only be done by
agreement and a cooling off period effectively puts the time within which the
defence has to be filed 'on hold'. The cooling off period is a valuable tool in
achieving a negotiated settlement but the new rules make it clear that this is
a single, non-extendable, period. If a negotiated settlement cannot be reached,
the defence has to be filed no later than 12 months from the original notification
of opposition. The cooling off period can be terminated at any time by either
party, in which case the opposition would then proceed to the next stage.
The Preliminary Indication
80% of decisions in trade mark oppositions are on the basis
that the mark is too similar to an earlier trade mark and that it will be used
for goods or services identical or similar to those for which the earlier trade
mark is already protected. A 'Preliminary Indication' sees a departure from
previous trade mark practice and involves the Hearing Officer making a "simple"
comparison of the marks, considering relevant case law and confirming his conclusions
to each party in a written statement.
However, the Preliminary Indication will not automatically
feature in future proceedings; it will be up to the parties to decide whether
to act upon or ignore it. The Indication can be referred to in evidence
but there may be cost implications if it found no grounds for opposition and the
opponent continued to pursue a hearing but was unable to file any substantial
evidence to make the Hearing Officer come to a different conclusion.
The Preliminary Indication has been described as a "focus
point" that gives an early indication of the chances of success, especially before
expense is incurred in gathering evidence. If used properly, the preliminary
indication letter will be a valuable negotiating tool.
In helping to safeguard an existing brand, infocus has developed
'infocuswatch' - a new 'trade mark watching service' which promptly notifies clients
if an application is made for a similar trademark or registered design.
'infocuswatch' is one of the latest products to be offered by specialist legal
intellectual property solicitors, infocus, for those clients involved in the creative
and technology sectors, research and development and brand-orientated marketing
activities.
For further information on the services available from
infocus, including infocuswatch, contact Kim Walker on kim.walker@i-infocus.co.uk
or call 0870 240 4713.
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