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It is now a year since new procedures were introduced to make the Patents County Court more attractive to smaller businesses seeking to enforce their patent and trade mark rights.   Since 1 October 2010, the Court has heard nine full trials, varying in length from one day to three days.   13 more trials are due to be heard before the end of 2011.

The new cap on damages should mean that businesses bringing or defending less complex infringement cases will no longer face unknown levels of financial risk. According to official scales published earlier this year, the maximum award of costs by the Court to a successful party in an infringement action was set at approximately £134,000.

The Practice Note also observes that an increasing proportion of litigants using the Tribunal are not represented.   In such cases, it says, unfamiliar legal territory sometimes gives rise to questions over the telephone.   The Practice Note warns that its Officers will terminate telephone calls when their nature ceases to be appropriate, either because of the content or the length of time the call is taking.   All users of the Tribunal, it explains, have a duty to respect its “inter partes” nature – meaning that it obviously cannot enter into discussions with one side without involving the other.   It can only give information or refer enquirers to the UKIPO website.

In L’Oreal v. eBay (Case C-324-09) on which judgement was delivered on 12 July 2011, the Court of Justice held that under certain conditions on-line retailers, who provide assistance in “optimizing the presentation of offers for sale” can be held liable for the sales of counterfeit goods.

L’Oreal had sued eBay in the English High Court claiming infringement arising from the sale of products not intended for sale (perfume testers) and other products not in their original packaging.   The High Court noted that eBay had measures in place to remove offending goods from sale but said that it could do more to reduce the number of sales on its on-line market place which infringe intellectual property rights.   It referred a number of questions to the Court of Justice and the Court has now held that trade mark owners could object:

• to the type of sales complained of if they damaged the reputation of the trade mark

• to use of a key word identical to a registered trade mark in a “sponsored link” where the advertising did not make plain the true source of the goods to a reasonably well informed and reasonably observant internet user

• if the on-line retailer is aware of facts or circumstances relating to offers for sale which “a diligent economic operator” would have realised were unlawful.

The Court of Justice also held that a trade mark owner could in principle obtain an injunction against an on-line retailer whose website had been used to sell infringing goods provided that any such injunction was effective, proportionate, dissuasive and did not create barriers to legitimate trade.

The proposals include a new small claims “track” in the Court – to be renamed the “Intellectual Property County Court” – for claims worth less than £5,000, and a fast “track” for claims worth between £5,000 and £25,000.   The procedural rules would also be simplified and costs would be capped at £50,000.

In contrast with other countries, the judge said, there was an unmet need for justice in low value cases where the issues were clear.   His report included statistics from a City law firm as to total costs in recent High Court Patent and Trade Mark cases.   The Trade Mark cases cost an average of more than £700,000 and took more than a year to reach judgment.

UK trade mark attorney litigators will be able to take advantage of any new procedures, as they already have rights of audience in the County Court in Trade Mark and Design cases.

Putting these recommended reforms into practice will require fresh legislation, however, and it is not at present clear, despite support from the Minister for IP, David Lammy, as to when the Government will find time for this.

In November  2008, a Hearing Officer at the UK Intellectual Property Office (“IPO”) held that the Defendant’s United Kingdom Trade Mark Registration of FIRECRAFT for items such as gas fires and electric fires was invalid.  The registration had been the subject of an application for a declaration of invalidity on the basis that the Claimant had an earlier right in the word FIRECRAFT which was used in relation to stone fireplaces.

Although the goods were not identical, and the Claimants had not shown that the activities of the Defendant had actually led to confusion, the Hearing Officer nonetheless came to the conclusion that the Claimants would have succeeded, at the time of the original registration, in a claim for passing off, having satisfactorily  established that they had a goodwill in the name, that there had been a misrepresentation by the Defendants and that the Claimants had suffered or were likely to suffer damage as a result of the erroneous belief engendered by the Defendant’s misrepresentation.

The Defendant did not appeal that decision and thus lost their registration.   The Claimants subsequently applied to the court for summary judgment on a claim for passing off.  There was doubt as to the relief that the Claimants could obtain in the proceedings, but the Claimants contended that the decision of the IPO was final and conclusive, and that the matter did not therefore need to be argued again before the court.

The judge considered that he was not bound by the decision of the Court of Appeal in the “Special Effects” case as that case had dealt with trade mark opposition proceedings.  As the case in the IPO had concerned invalidity, the judge took the view that the Defendant should not be allowed to have the issue of passing off decided again.  The decision of the Hearing Officer in the IPO was a binding decision by a court of competent jurisdiction on the same cause of action.

Until UK law is further clarified, trade mark owners clearly need to be particularly cautious when becoming involved in invalidity proceedings before the IPO, and also the Community Trade Marks Office.  The potential risk of the finality of an IPO decision will require careful analysis and all available evidence may need to be deployed to defend a registration if it should be attacked as invalid.

The United Kingdom Intellectual Property Office (“IPO”) is to offer a reduced fee for trade mark applications filed electronically from 1st October 2009.

Wildbore & Gibbons has been filing trade mark applications electronically for some years.  Apart from the attorney work, this also involves our arranging payment of the official fee of £200 for the first class of goods or services in each application, plus £50 for each additional class.

From 1st October 2009, the new fee for electronic filing is reduced to £170 for an application in one class, with the official fee for additional classes remaining at £50.  At the same time, however, the official fee for requesting an extension of time – in an opposition, for example – goes up from £50 to £100.

A further change is to restrict the ability to cover a series of marks in a single application.  A series of marks are those that differ only as to features of a non-distinctive character.  Whereas previously there was no limit to the number of marks that could be included in a series, that number will now be restricted to six, and there will no longer be a cost saving on the filing fee if the series is for more than two marks.  It will also no longer be possible to divide a single application for a series of two or more similar marks into separate applications, and thus a significant cost saving is removed for applicants whose two marks in a series, for example, are each acceptable for registration but are held not to constitute a series because of dissimilarities.

The lower application fee for electronic filing will benefit the vast majority of our clients.  The IPO is clearly anxious to preserve its market share in Europe following the recent reduction in official fees for European Community trade marks but nevertheless a Community trade mark remains good value if a trade mark is intended for several countries of the European Union.

If you need any further information about these changes, or generally regarding trade mark procedures and costs in the United Kingdom or the European Union, please contact us.

These reports became optional for participating EU member states in March 2008 and applicants requiring them had to pay an additional official fee. France, Germany and Italy never belonged to the scheme, but CTM applicants used to receive search reports from the other EU member states whether they wanted them or not.

It is important for CTM owners to undertake national trade mark searches, because a relevant prior right in any EU member state can invalidate a CTM registration. In principle, the chosen mark has to be available for use throughout the European single market. The national search scheme is now provided by just 12 of the 27 EU member states and the additional official fees for these searches has been reduced to 142 Euros, payable at the time that the application is filed.

Unlike the well-established informal procedure for objections, where it is merely necessary to point out to Companies House that a new name is “too like” the complainant’s existing registered company name, the new rules require the complainant to show that it has a goodwill in the earlier name and that the use of the new name would be likely to mislead. The complainant does not, however, need to have a registered company name or indeed a registered trade mark.

The registrant of a new name has a number of possible defences including, somewhat surprisingly, a defence that it has incurred substantial start-up costs in preparation or has adopted the name in good faith. It seems that these rules are drafted to give some protection to the “honest trader” who merely fails to do trade mark and company name searches before registering the new name. Indeed, the UKIPO, whose trade mark hearing officers will be the first company name adjudicators, takes the view that the rules are intended only to thwart “opportunistic” company name registrations – those intended, for example, to hold the other party to ransom.

It remains to be seen whether the Company Names Tribunal will interpret the rules so narrowly. After all, ignorance of earlier rights is no defence to infringement or passing-off in a court of law.

Subscribers to our Watching Services can have new company names monitored and reported to them. Please contact us for further details.