If the examiner says "no" - ex parte hearings in the Trade Marks Registry

Jane Lambert

According to the Intellectual Property Office's Facts and Figures for 2012 and 2013, the IPO received 41,524 trade mark applications in 2013 and granted 35,256 in that period. Clearly, most trade mark applications go through without any problem but there are some that do not either because the examiner (the IPO official who considers trade mark applications) objects to an application or a third party decides to oppose it.

Hearing 

In either case, there may be a hearing before an official representing the Head of the IPO (referred to as "the Registrar" rather than "the Comptroller" in trade mark matters) who is known as a "hearing officer". A hearing to consider an examiner's objection is known as an ex parte hearing because only the applicant for the trade mark attends the hearing.  A hearing to resolve an opposition is an example of an inter partes hearing because both the trade mark applicant and the opponent take part. The rest of this article will be on ex parte hearings.

Why might an examiner say "no"

Any sign may be registered as a trade mark so long as it can be represented graphically and can distinguish goods or services of one undertaking from those of other undertakings. Graphical representation means some form of writing whether in letters, numerals or both. Most signs that can be recognized by the senses can be represented graphically but there is one great exception. Nobody has yet found a way of expressing in writing a smell. In addition, there are some signs that are not registrable for various other reasons. For instance, a sign may be devoid of any distinctive character or it may consist of or contain a protected national or international emblem such as the royal coat of arms or Olympic rings. The grounds upon which an examiner may object to an application are sometimes called "absolute grounds of refusal" and these are set out in sections 3 and 4 of the Trade Marks Act 1994.

What happens if the examiner objects

If it appears to the examiner that the requirements for registration are not met, he or she has to inform the applicant and give him or her an opportunity, within such period as the examiner may specify, to make representations or to amend the application. If the applicant is represented by a trade mark attorney or other professional intermediary there is usually an exchange of correspondence which often results in a solution that meets the examiner's concern. If those concerns are not met within the prescribed time, the examiner has to refuse the application under s.37 (4).

The Hearing

If the application is refused the applicant's only recourse is to request a hearing before a hearing officer. Although this is a judicial proceeding and governed by law it takes the form of a referral to a senior official. Often the only persons present are the applicant or his representative and the hearing officer.  Such hearings can take place at the IPO's premises in Newport, by video conference or even by telephone. Applicants can also ask for a decision to be made on the basis of written representations. An applicant may represent him or herself or instruct an attorney to appear on his or her behalf. If a difficult point of law is involved the applicant may want to instruct a barrister.

Appeal

If the applicant fails to persuade the hearing officer he or she may appeal to the High Court or a lawyer appointed by the Lord Chancellor under s.77 (1) of the Trade Marks Act 1994 known as the "Appointed Person". If the applicant appeals to the court the Registrar is entitled to appear by counsel in which case the applicant risks paying the Registrar's costs if the appeal is unsuccessful.

Further Information

The IPO has published some very helpful guidance in Trade mark disputes resolution: hearings 20 May 2014.

Should anyone wish to discuss this article or trade mark law in general, he or she should call me during office hours on 020 7404 5252 or send complete my contact form.

London is Number 1 in the UK for Branding and Design

Piccadilly Circus at Night

Source Wikipedia

Jane Lambert

The Intellectual Property Office's Facts and Figures 2012-2013 were published last month and they make interesting reading. Businesses in London applies for 12,669 UK trade marks (up from 10,440 the previous year) and received 10,583 registrations (8,680 the previous year). That is more than any other region of the United Kingdom. The South East came second with 6,197 applications and 5,258 registrations and the East of England third in the number of applications (3,227) and the South West in the number of registrations (2,951).

London was also top in the number of registered design applications (1,153 compared to the South East's 1.066) but second to the South East in the number of registrations (720 in 2013 compared to the South East's 883).

London came second to the South East in the number of UK patent applications (2,588 in 2013 compared to 2.522 the previous year thereby bucking the national trend) and grants (346 in 2013). The comparable figures for South East England were 2,822 applications and 346 grants.  

We can assist London artists, designers, inventors, entrepreneurs and investors with our IP clinics at Middlesex University and our talks and publications all of which are free of charge. For our chargeable services see "IP Services from Barristers" 6 Apr 2013 4-5 IP.  If anyone wants to discuss his article or any patent, trade mark, design or other intellectual property matter he or she should call us on 020 7404 5252 or get in touch through my contact form. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

IP Professionals - who does what

Jane Lambert

In his review of IP and growth, Professor Ian Hargreaves noted that there is "a plethora of organisations providing advice and information in relation to IP" and that "the extent of information available on IP can actually act as a significant barrier to SMEs, particularly to start ups." Clearly what is needed is a simple guide as to who does what in the intellectual property jungle.

IP Professionals
In England and Wales there are four established IP professions:

• patent attorneys (or agents);
• trade mark attorneys (or agents);
• specialist solicitors; and 
• specialist counsel.

A fifth profession, that of IP strategists is beginning to emerge here and in the United States.

Patent Applications
If you, your company, university or other organization have invented a new product or process you may want to apply for a patent for your invention.  If you do, you would be wise to consult a patent attorney.

Patent attorneys specialize in drafting applications for patents that are broad enough to provide the necessary protection but not so broad as to be invalid. They are used to dealing with the Intellectual Property Office, European Patent Office and other patent offices around the world and can usually deal with objections by patent examiners and third parties. They will carry out or procure searches of the prior art (previous patent applications and the technical literature) to find out whether your invention is patentable and advise you accordingly.

You cannot however expect patent attorneys to advise you whether it would be wise to apply for a patent because few of them are trained to give business advice. Those that are would probably describe themselves as patent strategists.   It is important to bear that in mind because most patents cost more to obtain than the revenues that they generate. If you want advice on the wisdom of patenting an invention you should consult some other professional such as a management consultant or chartered accountant or, if you can find one, a patent strategist.

Patent attorneys can also draft applications for the registration of new product designs either as registered designs in the UK or as registered Community designs for the whole of the EU.

Most patent attorneys belong to the Chartered Institute of Patent Attorneys ("CIPA") and are regulated by the Intellectual Property Regulation Board ("IPReg").

IPReg keeps a register of patent attorneys which includes those who are employed in-house as well as those in private practice. If you want to find a firm of patent attorneys CIPA has a searchable database on its website.

Many patent attorneys and other intellectual property professionals give up to an hour of their time free of charge to members of the public who consult them at patent clinics.   In London an IP clinic is held every Tuesday at the London branch of the Intellectual Property Office at 4 Abbey Orchard Street, London SW1P 2HT.  Consultations are by appointment only and these can be booked through Sarah Harmsworth on 020 7405 9450.

Until 2006 patent attorneys in the UK were known as patent agents. In that year CIPA changed its name from the Chartered Institute of Patent Agents to the Chartered Institute of Patent Attorneys. In a short article by Ted Blake "Patent agents change name after 124 years" which remains on its website, the President of CIPA explained why:

“This change means that the official name of the Institute is now much more appropriate given the truly international aspects of our profession. Back in 1882 when the Institute was formed, the title patent agent was in use, and it remains a respected title, but with the passage of time members have adopted the term patent attorney which is the title used by patent practitioners throughout the rest of the English-speaking world. The members of the Institute deal every day with the very latest technological ideas which emanate from the four corners of the world, so we must move with the times no matter how proud we are of our history”.

The reference to "international aspects" is surprising because there are two separate professions in the USA:

• patent attorneys who are lawyers specializing in patent practice, and 
• patent agents who are not.

Although English patent attorneys can and increasingly do conduct IP litigation and appear as advocates in the Patents and Patents County Courts they are more like US patent agents than US patent attorneys. The problem lies in the fact that an "attorney" (which means "agent") was a lawyer who practised before the common law courts of England and Wales until the Judicature Act 1873 and the title "attorney at law" is still used by lawyers in the USA, South Africa and many other countries. 

Trade Mark Applications

If you want to register a British or Community trade mark you should consult a registered trade mark attorney.  Trade mark attorneys can also advise and assist you with the registration of designs either for the UK ("registered designs") or the EU ("registered Community designs").  Their professional association is the Institute of Trade Mark Attorneys ("ITMA") and they are also regulated by IPReg.   A list of registered trade mark attorneys is kept by IPReg and the ITMA website has a searchable database of trade mark attorneys in private practice on its website. Those practising in London are here.

Trade mark attorneys used to be known as trade mark agents.   They and their institute have also adopted the description "attorneys".

Many patent attorneys and some solicitors are also trade mark attorneys.   Some law firms prosecute trade mark and design applications even though they may not employ attorneys.

IP Transactions

If you want advice or assistance on a licensing, joint venture or other business transaction where intellectual property is one of several issues you should consult a law firm with expertise in IP.  Most such firms are very large but there are a few such as Filemot Technology Law where the principal Barbara Cookson is qualified as a solicitor, registered patent attorney and trade registered mark attorney.

Many of the larger law firms with specialist practices are members of the Intellectual Property Lawyers' Association ("IPLA"). 

Solicitors are regulated by the Solicitors Regulation Authority ("SRA") though some solicitors (such as Ms. Cookson) who are also patent or trade mark attorneys are regulated by IPReg.

Litigation

If you believe that someone has infringed your patent, copyright, trade mark, registered design or other intellectual property right or your are accused of infringing someone else's you should consult a solicitor or other authorized litigator.   

If you consult a solicitor make sure that he or she or at least one member of his or her team is an IP specialist. All the firms in the IPLA have such expertise.

Some patent and trade mark attorneys have qualified as patent and trade mark attorney litigators.  If the only or principal issue in the litigation is a matter of intellectual property law their knowledge and experience of patent or trade mark prosecution may be advantageous.  Also, some patent and trade mark agencies, such as Marks & Clerk and Harrison Goddard Foot, have associated law firms.

Specialist Counsel

If a new or difficult point of law arises during an application for a patent, registered design or trade mark or a business transaction the patent or trade mark attorney or solicitor may wish to consult a barrister specializing in intellectual property law. Such a barrister can also draft complex legal instruments such as software development contracts, source code deposit deeds and other documents.  

Occasionally, there is a hearing before a hearing officer of the Intellectual Property Office, Appointed Person or other tribunal.   Again, a barrister can help by settling statements of case, witness statements and skeleton arguments and presenting oral arguments to the tribunal.

A barrister can also advise on the strength of a claim for infringement of a patent, copyright, trade mark, design or other intellectual property right, the revocation of a patent, invalidation or revocation of a trade mark or other action in the Patents or Patents County Courts or Intellectual Property list of the Chancery Division or Chancery County Courts.  He or she can settle proceedings and evidence and present cases before those courts. 

The two great strengths of a barrister are that he or she is trained in advocacy and he or she will have been appeared before, or even against, the judges when they were at the Bar. Through such appearance he or she will have learned how the judges think. He or she will thus be in a better position than most to predict how they will determine new issues of law.

Barristers practise as sole practitioners in unincorporated associations known as "chambers" or "sets of chambers".  Well over half are in London and most are established near the Royal Courts of Justice in the historic Inns of Court. A handful of chambers specialize or have expertise in intellectual property and a list of those chambers can be downloaded from the Intellectual Property Bar Association website.

Barristers are regulated by the Bar Standards Board.

For further information see my article "IP Services from Barristers" 6 April 2013 4-5 IP.

IP Strategists
The US IP lawyer and strategist Jackie Hutter described patent strategists as "a new type of Intellectual Property advisor" who "combines business acumen with IP knowledge to provide business-focused advice." She continued:

"An IP Strategist does not advise you to spend your money on obtaining IP because you can, but because you need to. That is, an invention may be legally entitled to a patent, but if that patent does not protect a product or technology that your company is selling currently or planning to sell in the future, obtaining a patent is a waste of your company’s valuable resources. To ensure that you do not waste money on IP rights that do not align with your goals, an IP Strategist works with you to ensure that you only get IP that supports and maximizes your business value. In other words, an IP Strategist first listens to you to determine what your business goals are and how you wish to achieve them and only then will the IP Strategist suggest that you move forward with obtaining cost appropriate IP protection."

In the UK individuals with an interest in IP strategy are appearing in all four professions. Many are members of the IP Strategists Association ("INTIPSA").

Further Information
If you want to discuss this article or intellectual property in general call me on 020 7404 5252 during office hours or fill in my contact form.