Trade Mark Newsletter May 2002
Contents
Uk Registry Practice - Costs Awards In Oppositions
Extended Rights For Community Trade Mark Holders
Importance Of Trade Mark Watching
Seven Up V. Cherry Up
Japan - Appointment Of Marketing Manager For Asia
Pacific
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Uk Registry Practice - Costs Awards In
Oppositions
It is the usual practice of the UK Trade Marks Registry to award
costs to the successful party in opposition proceedings. These are
assessed based on a published scale of costs.
Therefore a party which succeeds in an opposition is able to expect
some contribution to their costs from the other side.
In the past, costs awards have generally been low and not intended
to compensate a party for the expense incurred in conducting a trade
mark opposition.
There has however been a revision to the scale used by the Trade
Marks Registry in assessing awards of costs (and decisions based
on this new scale are now being made). Furthermore, a number of
decisions have confirmed that the Registry can (and in appropriate
circumstances will) award costs “off the scale”.
Previously a successful party in a UK opposition matter could expect
to be awarded costs averaging £700 (which was far from a complete
contribution to the actual costs involved). Following the Trade
Marks Registry’s revision to its scale in May 2000 a successful
party can now expect to receive costs (and a losing party expect
to pay costs) averaging £2,000 and up to £4,250. This
figure will still not cover the full cost of the proceedings but
is seen as a more realistic contribution to the costs involved.
In addition various cases have confirmed that use of the new scale
by the Registry in deciding the level of costs to be awarded is
not mandatory and the Registrar can award costs “off the scale”
i.e. compensatory costs (even up to an amount equating to full compensation).
The Registry is taking the view that it will consider applications
for costs to be awarded “off the scale” in exceptional
circumstances only but may be willing to do so in cases for example
where a party has used deliberate delaying tactics, has included
grounds which are not pursued/not sustainable, has unreasonably
refused settlement proposals etc.
Furthermore in the past it was the usual practice of the Registry
to defer any costs award arising from an Interlocutory Hearing until
the final decision. The Registry will now more frequently make costs
awards in respect of preliminary Hearings.
All of the above are issues which clients will now need to take
into account with regard to the future conduct of opposition matters
in the United Kingdom.
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Extended Rights For Community Trade
Mark Holders
The European Union is due to grow from 15 current members to up
to 28 in future. Potential new Member States of the EU are Estonia,
Latvia, Lithuania, Poland, Czech Republic, Slovakia, Hungary, Slovenia,
Romania, Bulgaria, Turkey, Malta and Cyprus, all of whom have applied
to join (see countries highlighted in red on map shown).
It is hoped that those countries where accession negotiations are
progressing well could become members as early as 2004. To preserve
the Community Trade Mark as a single right having effect throughout
the Community, new Member States must accept existing Community
legislation and Community rights on their accession to the EU. Thus,
all Community Trade Marks registered or pending at the date of enlargement
will be extended automatically to cover the new Member State. This
extension of rights is good news for holders of Community marks,
particularly as no fees will be charged for it! Clearly, however,
there is the potential for conflict between the extended CTM and
national rights already existing in the new Member State, such as
existing trade mark registrations. It is provided that the owners
of existing national rights may not use them to prevent a Community
registration or application being extended to their country (unless
the Community registration/application was applied for in the six
months immediately preceding enlargement). However, owners of existing
national rights may be able to prevent use of the Community mark
in the new Member State.
Trade mark owners should consider;
- registering marks at CTM level to take advantage of automatic
extension of rights
- checking for conflicting national rights in candidate countries
that will become important markets on accession to the EU
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Importance Of Trade Mark Watching
Owners of registered trade marks in Europe should give serious consideration
to putting their important marks on to a trade mark watch. This
will provide advance warning of later filings for marks which conflict
with the owner’s rights. There is no examination for conflicts
in the Community Trade Mark system so it is possible for identical
marks to be accepted at Community level.
Even in countries where there is still an official examination
for conflicts, of which the United Kingdom is one, the official
conflict search has become less strict. In our experience, very
similar marks are frequently accepted by the UK Registry. It is
not safe to assume that conflicting UK marks will be cited against
new applications and that official rejection will follow.
The idea that it is the responsibility of the trade mark owner
to police and enforce his/her rights is gaining popularity in this
field; the consequence is that when a mark has been examined and
accepted by a trade mark registry there may still be potential conflicts.
Trade mark owners are strongly recommended therefore to consider
which of their more important marks should be the subject of a watching
service entry.
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Seven Up V. Cherry Up.
A recent decision from the High Court dismissed an appeal by Silver
Spring Limited to overturn the successful opposition by Pepsi to
the registration of their mark CHERRY UP. Despite Silver Spring
claiming several years’ use prior to the date of application,
Pepsi persuaded the Registrar that an opposition based upon their
SEVEN UP trade up mark, should succeed.
For a time Pepsi had also sold CHERRY SEVEN UP; however, on appeal
to the High Court Silver Spring admitted that CHERRY UP was too
close to both SEVEN UP and CHERRY SEVEN UP.
Unusually, the judge issued his decision on the day of the hearing,
upholding the Registrar’s decision, stating that there exists
a likelihood of confusion between the marks.
The lesson to be learnt from the case is that both before the Registrar
and the Court, it is imperative for full evidence to be provided
where prior use exists. The Court cannot be asked to assume the
existence of any notoriety or substantial use without supporting
evidence.
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Japan - Appointment Of Marketing Manager
For Asia Pacific
We are pleased to announce the recent appointment to D Young &
Co of Mr Philip Fujii as Marketing Manager for Asia Pacific.
The Trade Marks Group look forward to working with Philip who
is already providing us with valuable support both in our representation
of UK clients' trade mark interests in Japan and also our representation
of Japanese trade mark interests in the United Kingdom and Europe.
Philip can be contacted at phf@ma.kew.net (Japanese language clients
only) or phf@dyoung.co.uk (all others).
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