Wednesday, 19 November 2008

Is your trade mark going to work?

Two cautionary tales are very much in my mind at the moment. They illustrate the dangers of filing trade mark applications without doing enough homework first - indeed, they demonstrate that the process of obtaining a trade mark registration is not widely understood and does benefit from professional advice.

First, I am helping a small business client who filed a Community trade mark application themselves without carrying out any research into what others had already registered, and now faces three oppositions. The oppositions are, I think, rather optimistic, but in a way that hardly matters: if the opponents stand their ground, my client will be liable for costs if they lose, and are likely to be unwilling to take that risk. To say they were being bullied would perhaps be unduly pejorative, and of course I know nothing of the opponents' motives, but the fact is that the client might well feel bullied, which is just as bad.

Second, I have been reminded of a slightly odd experience many years ago, when I received a phone call from my firm's PI insurers. They explained that another of their insured firms was facing a negligence claim arising out of a trade mark application that had gone wrong. The insurers, unsurprisingly, knew little about trade mark practice and came up with the idea of calling someone else they insured who did practise trade mark law. I suspect that the firm facing the claim had mistakenly thought that, as if was only a matter of filling in a form and sending it off the the Registry, a trade mark application was well within their competence.

An applicant is not required to carry out a clearance search before filing a trade mark application, not in the UK or the European Community system. If the trade mark is as yet unused, and time would permit it to be changed if conflicts were detected, the most effective way to proceed (certainly for a small business for whom costs were important) would often be to file the application and let the Registry perform the clearance search. But commonly the problem is that the business is already using what it wants to register, and having to change it would be an expensive, perhaps even a fatal, setback.

My reply to the insurance company was that there was nothing inherently wrong with what their insured had done, but that the terms of their "client care" letter (how I dislike that infantile term which the Law Society has foisted upon us) would be crucial here. Had they explained to the client how important a clearance search would be, and the possible consequences of going ahead without? If the client had come to them too late, as is so often the case, had they covered their backs? I know nothing more about this case, but I have a suspicion that the firm probably hadn't done this: but the more important lesson to learn from this is not to dabble.

I think I might spend some time this morning reviewing my standard terms for trade mark work ...

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