Monday 24 November 2008

A likelihood of confusion

Whenever journalists write about intellectual property, there is a strong likelihood of confusion. In fact, it's almost a certainty. Last weekend's FT contains a classic example: the headline tells us that companies are anxious to protect their copyright in these straitened times, while the article is mostly about patents and trademarks, though it quotes a trade mark practitioner talking about designs, too. A perfect example of the genre, and a reminder to me that nothing I read in the newspapers is ever right.

Saturday 22 November 2008

European Community and European Union

Nothing irritates me more than sloppy use of language, especially when it's lawyers who are being sloppy.  Whenever I hear mention of, or read about, European Union competition law, or trade marks, or directives, or regulations, or whatever, I cringe.

Some people seem to think that the European Community ceased to exist when the Union was created.  Far from it.  The Community (the merged Community, that is, previously the European Economic Community, the European Coal and Steel Community, and the European Atomic Energy Community) is the organisation with the power in the competition and single market areas (as well as lots of others).  It is one pillar of the Union, along with the Common Foreign and Security Policy pillar and the Police and Judicial Co-operation in Criminal Matters pillar: when (if) the Lisbon Treaty comes into operation the three pillars will be subsumed into the Union, which will save a lot of time and effort talking about cumbersome titles - but until then it is utterly wrong to talk about European Union trade marks, competition law and so on.  Especially for lawyers to do so!

As for the so-called European Court of Justice (or to give it its proper name the Court of Justice of the European Communities - it seems appropriate that it should retain the plural form of the last word of its name given that it still has jurisdiction over matters arising under the three original treaties), don't get me started - and I am not a non-EU European.  I wonder how the Swiss, or Norwegians, or other Europeans, feel about the instition adopting a short name that impliedly givves it jurisdiction over them?

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 ...

Trade mark registration scams

Sending documents that are not invoices, but look very much like them, demanding payment for vaguely-described services, is nothing new. When I worked for the Confederation of British Industry in the mid-eighties, there were several bogus directory publishers (some who even produced a spurious directory from time to time) sending out these things. Now, the technique has been transferred to the world of trade marks.

A client has just asked me about a document - expressly calling itself a "solicitation" and not a request for payment - from an outfit called IBIP with an address in South Carolina. (The company quotes a phone/fax number, which in this day and age seems to me to speak volumes about the sort of set-up it must be.) They trawl trade mark office journals, and contact applicants (not representatives) offering an entry in some sort of database. The solicitation, and the terms and conditions, are written in terrible English which helps to make far from clear what it is all about.

The charge for whatever it is that is being sold is over $1500: these parasites are making more than professional representatives who actually bring something useful to the process of trade mark registration. I tell my clients that they need pay nothing to anyone except my firm, and they should ignore any demands for payment from any other party: but presumably people are still being caught out otherwise these scams would soon evaporate.

Thursday 13 November 2008

INTA midyear leadership meeting

INTA's midyear meeting is a new experience for me: only 1100 delegates (or "attendees", in US English - surely it should be "attenders", if it has to be "attend-" anything? I was attending the meeting, not the other way round). So too is sunshine, at least these past couple of years, and the Country Club lifestyle is certainly alien to me.

The meeting itself has been good. I have been attending the educational sessions, most unusually for me, and while one yesterday was poorly staged (speakers not addressing microphones, a rather hard-to-follow discussion) the second, on trade marks and human rights, was fascinating. Actually, it could better have been entitled "trade marks as property", and it showed me why Bill Patry referred to the property metaphor when I heard him lecturing about copyright last year - that IP is property is not settled in US law.

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