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When a trade mark application is submitted, the IPO checks the Register of Trade Marks to see whether there are any similar earlier marks. If there are, the applicant and the owner of the earlier trade mark are notified.
If the earlier owner raises an ‘opposition’, then the applicant is allowed 2 months to respond with a defence. It is possible to ask for a deferral (called a “cooling off period”) in which discussions can take place about possible co-existence of the two marks. The owner of the existing trade mark has to agree to this, though, and it puts the opposition on hold for 9 months.
Our client provides clothing in the course of providing their service, and the trade mark registration that we secured for them covers all forms of clothing, headwear, and footwear.
A new trade mark application was submitted by a company that has a clothing boutique and is using the same name – but only for clothing.
When we found out about the application, we contacted the applicant. They came back to us with a couple of suggestions on how they could limit their use of the trade mark and we talked about it. After discussing it we decided not to accept their offer and asked them to withdraw the application and stop using the mark. In the meantime, we filed an opposition on behalf of our client.
They then submitted a defence to the Trade Marks Registry, as required as part of the procedure when there has been an objection to an application.
However, when we received a copy of their defence it was clear that it had been written using generative artificial intelligence (AI). It had factual errors in it, irrelevant information, missing attachments and the style of response didn’t follow legal requirements for this type of defence.
This was also noticed by the Trade Marks Registry, and the applicant was asked to rewrite and resubmit their defence document, which they have now done. However, they forgot to sign the form despite there being a prominent box in which to do so. The signature is quite important as it provides the necessary confirmation that the applicant believes that the facts stated in the defence document are true. So the Trade Marks Registry gave them a short period in which to file a corrected defence… which they did… still without a signature.
Meanwhile, their application is going nowhere and the opposition isn’t making any progress towards a decision. To be frank, that suits us just fine.
If the applicant had used an IP lawyer to file their application, the defence argument would have been written in accordance with the appropriate legal requirements and would not have been rejected by the trade mark registry (three times). By writing the defence with the assistance of AI, the applicant risked having the application rejected immediately.
The IPO has recently updated the guidance on the use of generative artificial intelligence in trade mark application cases to remind individuals and legal representatives that they must ensure the accuracy of documentation that is submitted.
From the trade mark holder’s point of view, this shows the benefit of having asked Downing IP to submit the original application, because when we take action and object to a trade mark application on their behalf, we have the experience to query any errors in the documentation supplied by the applicant.
