December 2024 News

Keep your eye on the prize

This is one more suited for my readers who work in IP, but I hope you’ll all find it interesting.  It relates to time limits in Trade Mark Oppositions – a small but rather influential part of the process.

 

Back in the day

I started doing this stuff in 1991, when proceedings were governed by the Trade Marks Act 1938 rather than what I increasingly inaccurately refer to as the “new act” (it was passed in 1994…).  Things then were quite lax.  We moan about poor legislative drafting today, but it only took until 1939 for the 1938 Act to be described as being of “fuliginous obscurity”* by a High Court judge.  Given that degree of vagueness, things were much looser then.  I remember extending opposition periods for several years, then filing a pro-forma Notice of Opposition, and then extending the defence deadline for years, and so on.  I don’t remember any opposition ever reaching a decision…

It’s a lot tighter now.  Extensions of the opposition period are limited to one extension, of a single month.  Once the opposition is running, the procedural deadlines are only extendable if you present a good explanation of what you have done so far to meet it, what you still need to do, and why you couldn’t do that bit within the deadline – and that means “couldn’t”, not “didn’t”.  A firm on the other side of an opposition that we’re handling has just found how much tighter things are.  Let me explain.

 

Enter the client

Our client asked us to help when an opposition arrived in response to a trade mark application that they filed.  It looked eminently settle-able, the two businesses operate in different areas and don’t offer competing products.  We discussed an outline settlement with the Opponent, that was well received, so we sent a more formal proposal.  Positive noises came back, and a formal reply was promised.  We waited… and waited… and waited… and our defence deadline arrived… so we filed a defence, and the Registry set a deadline for the Opponent to file its evidence. 

Now, in this case, the evidence is quite important for the Opponent.  It might (or might not) entitle them to the wider protection offered to a famous mark, it could establish a high level of recognition of their mark which would entitle them to a wider scope of protection, and it could explain why – despite first appearances – there is in fact a likelihood of confusion. 

 

Timelines

Shortly before their deadline, the phone rang with feedback on our proposal.  With a few changes, we had a broad meeting of minds in principle and the Opponent agreed to send a formal drafted agreement in a few weeks.  To allow for that, could they have a two month stay?  Of course they could.  The Registry was happy with that too, and set a deadline of ‘x’ in two months’ time to complete the settlement and, if the case was not settled by ‘x’, then the Opponent was to file evidence by ‘y’.

Date ‘x’ duly arrived.  Despite a few reminders, no agreement was forthcoming from the Opponent.  So we inferred that the settlement was off, and started thinking about our evidence in anticipation of seeing the Opponent’s. 

Date ‘y’ arrived and – on the very last day – there appeared a draft settlement agreement and a request for another stay.  Here the opinions diverge… the Opponent thought that the draft agreement reflected the discussion we had had several months earlier.  We didn’t.  Either way, it was not acceptable as a draft.  We were also getting a bit impatient and sceptical of their attitude.  So we said ‘no’.

 

What happened next

The Opponent immediately filed a request to extend their evidence deadline, together with some hurriedly-assembled evidence.  Their grounds for requesting an extension were that “we thought it was a done deal and we would not have to do this, but those awkward people at Downing IP ruined that so we need more time”.  Yes, I’m summarising that slightly.  But only slightly.  The Registry has just said ‘no’ to their request, leaving them with no evidence and a much reduced scope of opposition, with no opportunity to use the ‘famous marks’ argument, etc. 

 

Firmly focussed on the prize

Their mistake was a simple one; they regarded the Registry’s deadlines as a flexible background which they could fit around the negotiation process.  That’s the wrong way round, nowadays.  The Registry’s timetable is front and centre, and the settlement discussions are the background which needs to be fitted around the Registry process.  We’ve run this opposition with our eyes firmly focussed on being in a position to meet the Registry deadlines as they arrive, and we’ve (unintentionally!) secured a major advantage as a result. 
 
Anyway, all the best, have a lovely festive break, and may your drafting be not fuliginous in the slightest.

*I had to look it up too.  It means “as black as soot"

Until next time.

Michael                         

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