Oppositions, Cancellations, Litigation Flashcards
What are absolute grounds for refusal to register a mark?
Absolute grounds relate to the mark or application itself and are not based on conflicts with the rights of third parties. They are problems inherent in the mark itself, i.e it is non-distinctive, generic or in bad faith. Examiners typically examine trademarks on absolute grounds, but opposition and invalidation actions can be brought by third parties on absolute grounds.
What are relative grounds for refusal to register a mark?
To do with prior rights, i.e the mark in question conflicts with earlier rights. Most oppositions and invalidation actions brought under relative grounds by owners of prior rights. Relative grounds can only be raised by owner of earlier right(s) or other relevant party.
What are the common relative grounds for refusal of registration?
Section 5(1) - a trademark shall not be registered if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier trademark is protected
Section 5(2)(a) - a trademark shall not be registered if it is identical with an earlier trademark and is to be registered with goods or services similar to those for which the earlier mark is protected
Section 5(2)(b) - a trademark shall not be registered if it is similar to an earlier trademark and is to be registered with goods or services similar/identical to those for which the earlier mark is protected (and is likely to cause public confusion)
Section 5(3) - a trademark shall not be registered if it is similar/identical to an earlier trademark which has a reputation. Using the later mark would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier mark.
Section 5(4)(a) - a trademark shall not be registered where the use of the applicants trademark would be contrary to law, in particular, the law of passing off (I.e an unregistered trademark in use)
Section 3(6) - a trademark shall not be registered if or to the extent that the application is made in bad faith
What is the initial timeline/process of a UK opposition?
UK application publishes, then the UKIPO notifies proprietors of UK applications and registrations that a potentially similar mark has been accepted for registration (or their trademark company will notify them).
Initial 2 month window to oppose, which can be extended by a further month.
Notice of Opposition (TM7) will be filed.
What is the form required for extending 2 month opposition window? (How to complete/fees?)
Form TM7A
Online form - no fees
If the opposition deadline is extended, only the party filing the TM7A can file opposition in the extended period
Details of opponent must be correct, opposition must be filed in same name
No need to state which grounds opposition will be relied on
Filing this form = notification to applicant that an opposition might be filed
What is the form for filing a Notice of Opposition? (How to file/fees?)
Form TM7
Fee of £100 for 5(1) or 5(2) - likelihood of confusion only
Fee of £200 for other grounds 5(3) reputation, or 5(4)(a) passing off, etc
Form must be signed
Opponents details must match those of TM7A (if filed)
Must identify grounds of opposition (earlier mark relied on)
If relying on unregistered rights then date and place of first use required
Statement of grounds must be included
Not online - either by fax, post or email
After filing opposition all correspondence and any documents sent to UKIPO must also be copied to the other party
What happens after filing TM7 (Notice of Opposition)?
Form TM7 sent to Applicant by the UKIPO
2 month time period set followed by either —
- Form TM8 (Notice of Defense and Counter-statement) by applicant (online/no fee)
If TM8 and counter-statement filed the adversarial stages of the opposition begins
Proceedings move on to evidence rounds - Opponent files evidence in chief
- Applicant files evidence in chief
- Opponent files evidence in reply
following evidence rounds parties have option to request an oral hearing or file written submissions
decision then made - Form TM9C (enter a cooling-off period —> extends period for 7 months, and can be further for a further 9 months by filing a Form TM9E)
- has to be agreed by both parties
- if either party want to opt out, can file a Form TM9T - no fees for any of these forms
- once cooling off period ends, deadline is non-extendable (if Form TM8 not filed by applicant then application deemed abandoned)
What is the form required to enter a cooling-off period?
Form TM9C - extends cooling off period for 7 months
Can be extended for further 9 months by Form TM9E
Either party can opt out by filing TM9T
How does the Fast Track Opposition work?
Only applies for 5(1) and 5(2) oppositions
File Form TM7F (with statement of grounds) - £100.00
Opponent can rely on maximum of 3 earlier rights and, if any over 5 years old, then must file proof of use with the opposition
Applicant has 2 months to file TM8 and counter-statement
Advantages/disadvantages of fast track Opposition
Faster, cheaper and less complicated
Average decision time - 3-6 months compared to 12-15 for normal opposition
Cost awards capped £500.00
Key Features of Oppositions
Pre-registration
If successful the application is rejected
Anyone can file (depending on grounds, anyone can file absolute grounds)
Both absolute and relative grounds
Can be partial or whole (I.e against only some goods or services)
Key Features of Revocation
Post-registration
If successful deemed cancelled from the date the action filed
Anyone can file
Typically use-related (non-use, generic, likely to mislead public)
Can be partial or whole
According to the Trade Marks Act - What are the grounds for the registration of a trademark to be revoked?
Section 46
(1)(a) - that within the period of 5 years following registration it has not been out to genuine use in the UK, by the proprietor or with his consent, in relation to the goods/services for which it is registered, and there are no proper reasons for non-use
(1)(b) - use has been suspended for an uninterrupted period of 5 years, no reason for non-use
(1)(c) - in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered (become generic)
(1)(d) - liable to mislead the public - particularly as to the nature, quality or geographical origin of those goods or services
How is Genuine Use assessed?
Section 46(1) genuine use must be real, commercial use
Use must continue after threat of revocation goes away
Use can include the mark in a form which differs to that which is registered, providing that the differing elements don’t greatly alter the distinctive character of the mark as registered
Onus is on proprietor to provide proof of use (or reasons for non-use)
What form to file for revocation based on non-use?
Form TM26N
£200.00
What is the process for a revocation based on non-use?
Form TM26N filed - sent to IPO (reviewed for admissibility) and sent to registered proprietor
Form TM8N and counter statement including evidence of use (reasons for non-use) filed, 2 month window to file
Tribunal will set further periods for parties to file evidence and submissions, discretionary/no fixed periods, but typically goes -
- Proprietor files evidence of use
- Revocation application files evidence/submission
- Proprietor files evidence/submission in reply
- Hearing or written submissions
- Result - award of costs
What is the form required for filing a revocation based on other grounds? (Not non-use)
Why/when can this be filed?
Form TM26O - £200.00
I.e trademark become generic, likely to mislead public etc
Can be filed at any time after registration (doesn’t have to be 5 years like non-use)
What is the process for a revocation based on other grounds?
Form TM26O filed
TM8 and counter-statement filed by proprietor (within 2 months)
Tribunal will set further periods for parties to file evidence
Key Features of Invalidation
Post-registration
If successful application deemed never to have been filed
Anyone can file (depending on grounds)
Absolute grounds and relative grounds
Partial or whole
What form is filed for an invalidation proceeding?
Form TM26I
£200.00
What is the process for an Invalidation proceeding?
Form TM26I filed - £200.00 (including statement of use, if relying on earlier right(s)
Form TM8 and counter-statement filed by applicant (within 2 months) - no fee
Tribunal will set further periods for parties to file evidence and submissions, discretionary and no fixed periods or sequences (often 2 month blocks)
Then hearing or decision
What are the two avenues for appeals? (After tribunal decision)
- Appointed Person
- High court -> Court of Appeal -> Supreme Court
When must an appeal be made?
Within 28 days from the date of the issuance of the decision
Who is an Appointed Person?
A senior intellectual property lawyer appointed by the Ministry of Justice, he or she is wholly independent of the tribunal
How is an appeal made to the Appointed Person? (In response to an opposition, invalidation, cancellation)
Filing a Form TM55P (Notice of Appeal to the Appointed Person)
£250.00
Must include grounds of appeal together with any relevant trademark law and legal authorities relied upon in support of each of the grounds of appeal
Appeals to the Appointed Person are FINAL - cannot be appealed further
What is the typical process of examination around the world?
Examination - publication - opposition - registration - revocation/invalidity
Examples of countries with POST-registration opposition procedures
(Applications are examined and once accepted registered. Third parties can then bring opposition post-registration and if successful the registration is cancelled)
Germany, Japan, Switzerland
Examples of countries with PRE-examination opposition procedure
(Following formalities examination, applications are published. Any oppositions filed may then be decided alongside the substantive examination of the application)
Spain and Latin American countries
Examples of countries with extendable opposition deadlines
UK, US, Singapore
Which country has no opposition period?
Russia (however can file observations during an applications examination)
What is Litigation?
Litigation is the process of bringing a matter to court to enforce a particular right. It’s the act of bringing in a lawsuit to resolve any disputes that may arrive before the court.
Allows a party to
1. STOP an infringing act, i.e an injunction
2. DAMAGES, i.e obtain some sort of compensation for infringing activity
What is Trademark Infringement?
The unauthorized use of a trademark which is identical or confusingly similar to a registered trademark used by another party.
Where are Trademark Infringement proceedings typically brought before?
- High Court
- Intellectual Property Enterprise Court (IPEC)
Why is the High Court typically considered the premier venue in the UK for large and complex legislation?
No limit (in theory) on how much a claimant may claim in damages
No limit (in theory) on amount of costs which may be recovered by the successful party
(However the High Court will play an active role in managing costs)
What is the IPEC?
Intellectual Property Enterprise Court - specialist court within the Chancery Division of the High Court, handles cases related to IP (trademarks, designs, patents, copyright etc)
Designed to handle smaller, shorter, less complex/important cases. Idea is to encourage small and medium sized enterprises and private individuals to safeguard their rights, without the enforcement options being cost prohibitive.
What are the two tracks of the IPEC?
- Multi-track - suitable for claims with a value above £10,000 but not exceeding £500,000
- Small claims track - suitable for claims where the amount in dispute (not including costs) is £10,000 or less
Advantages of the IPEC
Quicker (compared to High court)
Cheaper
Less financial risk (claims and costs capped)
What are the 3 levels of Chartered Trade Mark Attorney Litigation Rights?
- Intellectual Property Litigation Certificate
- basic level of rights all Chartered TM attorneys hold
- can conduct appeals in High Court, litigation in IPEC, and appeals in Court of Appeals and Supreme Court - Higher Courts Litigation Certificate
- can conduct litigation in High Court - Higher Courts Advocacy Certificate
- combined rights of a barrister or solicitor, full rights of audience in IP cases in all UK courts
