CITMA Paralegal Seminar Obstacles to trade mark registration

CITMA Paralegal Seminar – Obstacles to trade mark registration Trade mark examination reports David Yeomans, Keltie LLP

Trade Mark Examination Reports: Hints, Tips and Quirks By David Yeomans, Senior Associate, Keltie LLP 25 November 2020

A Little About Me…

Intro/Agenda 1. Recap of the TM application process 2. Absolute grounds objections 3. Specification issues 4. Relative grounds issues 5. WIPO’s examination of IR’s 6. Brief focus on USA 7. Time for questions

Application Stages – General Overview and Process 1. File application 2. Formalities examination 3. Exam report issues 4. Search report issues (EU) 5. Mark published 6. Registration (if no successful oppositions) NB – not necessarily always undertaken in this exact order!

Examination Reports – Main Issues 1. Absolute grounds 2. Specification issues 3. Distinctive? Descriptive? Others – generic; shapes etc. Wrong class? Vague wording? Relative grounds Earlier registered rights? Will they block your application?

Absolute Grounds – UK Initial objection raised – argue mark distinctive Time limit to respond: 2 months Extensions of time possible but reasons are needed – ask early A little more relaxed than the EUIPO Evidence of acquired distinctiveness? Witness Statements. Objection maintained – request hearing?

Absolute Grounds UK: Example PET SUPPLIES WAREHOUSE – application refused for pet shop services Accepted: True to life animal images probably wouldn’t have been sufficient Consult the examination guide – ideally before you file. It can also help you frame your arguments if you are contesting.

Absolute Grounds – UK

Absolute Grounds – Common Communications European Trade Mark & Design Network (most main EU states)

Absolute Grounds – EU Quite strict Initial objection raised - 2 month time limit to respond 2 months extension of time – easy, just ask for it online Subsequent extensions need full supporting reasons (e. g. pandemic) You can submit written arguments in response Generally quite tricky to change their mind! If arguments fail you can appeal to BOA and then up to the CJEU Oral hearings are extremely rare (almost unheard of). Acquired distinctiveness as primary or subsidiary claim – but beware of evidence issues!

EU Refusal Example

Absolute Grounds – EU Use the Guidelines to help – again ideally check before filing to flag risk!

Absolute Grounds – EU

Absolute Grounds – EU • Apply the guidance to your situation. • Use it as context to your arguments – also useful for case law references

Specification Issues – UK & EU Cannot broaden scope Add new classes (pay official fee) if terms have been misclassified UK - you can call the Examiner. UK - there is also a classification team that you can consult Argue that terms belong in the class that you filed them in The registries often suggest replacement terms but do check Sometimes they will just say that a term is too vague Use TMClass and the Harmonised database

UKIPO – Exam Report

UKIPO Exam Report

EUIPO Exam Report - Classification

EUIPO Exam Report - Classification Easiest way to respond is online via User area

TMClass

Relative Grounds - UK Searches for earlier conflicting UK and EU marks (and IRs designating either register). Notify if find anything that they believe conflicts (i. e. identical marks or likelihood of confusion). Will notify the owner of earlier UK rights identified unless you can persuade it not to (argue) It will notify holders of earlier EU rights Earlier cited marks will not block your application, the owners must oppose (Friday’s talk)

Relative Grounds UK - Citation Also shows the owner and representative details This example is an EUTM so the owner would not be notified However, beware of other means (e. g. watching service) Check out the proprietor to see if there is an infringement risk (use TMView)

Relative Grounds - EU Search report issued separately to exam report Will cite earlier EUTMs or IR designations Hit and miss! Sometimes cites marks that don’t appear similar at all; will miss others Will notify the owners of earlier rights, you can’t contest but you can limit your list of goods and services if concerned Won’t block your application based on earlier rights – the owners must oppose You can use TMView to better analyse the risk of an opposition and/or infringement

Relative Grounds - EU

Relative Grounds - TMView

TMView Has data from many national offices too Better idea of the overall picture If you just check EU database you would miss e. g. German or French national registrations which would be very relevant to the overall risk Can search by applicant etc. as well as mark and application number Can also search devices

IR Examination at WIPO: Quirks IR based on “home” app. /reg. 5 year dependency period WIPO will flag “vague terms” – you don’t have to amend, but if you don’t a note will be added that WIPO think they’re vague. Be careful – respond through office of origin and not WIPO! If you respond to WIPO by mistake they won’t tell you… Once passed central examination, it is passed to the designated territories for separate examination

IR Examination: Vague Terms

IR Examination – Designated Territories Time limit for examination varies (12 or 18 months) – if time is of the essence, consider national filings instead Your response deadlines vary – China: 2 weeks; USA: 6 months. In doubt – check! 3 possible outcomes of member office examination: 1. You hear nothing by the 12/18 month deadline (tacit acceptance) 2. Statement of grant is received 3. Notice of provisional refusal issued

IR Examination – Designated Territories Just because WIPO doesn’t object to a term doesn’t mean the territories won’t! Provisional refusals are sent by member territory to WIPO who then send to you but usually need to respond through a local associate There are some quirks, e. g. second part fee in Cuba and Japan Use Madrid Monitor to keep an eye on progress (also useful for checking third party IRs/designations). Use real time status tab

IR Examination – Madrid Monitor

USA – Particularities and Peculiars US designations: MM 18 – Declaration of Intent to Use Specification – USPTO is very picky! Be specific. Consider taking local advice before filing (especially if filing a US application rather than designation) First to use jurisdiction – register searches are still useful but in- use searches also recommended

USA - Specification

USA – Particularities and Peculiars Cited marks will block your way! Letters of consent can be used, but more like co-existence agreements Can you threaten to cancel the cited mark(s)? Or use threat to obtain consent? You will need a US associate to respond for you, but you can do some homework yourself first

USA The USPTO database is available online (TESS – Google USPTO TESS) Look up cited marks – are they vulnerable to cancellation? Have they filed the mandatory declarations of use? When was the mark registered? There is also a database of USPTO acceptable terms

USA • Search by mark or application/registration number

USA

USA Trademark Identification (ID) Manual:

Wrap-up: My 3 Top Tips • Use the resources at your disposal (Guides; Manuals; TMClass; TMView; Common Communications; USPTO TESS; USPTO database of terms). • Always read the exam reports carefully! If unsure on deadline check with local counsel • Remember the bigger picture

Thank you! Any Questions? David. Yeomans@keltie. com