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| Coach and horses in search of a unitary right for them to drive through |
The seminar has also attracted the attention of the IP press. According to Adam Smith, writing for the World Trademark Review blog,
"...The meeting, organised by MARQUES and set to carry discussion on several facets of the study, will bring together brand owners, academics, attorneys and IP office representatives.
[Today's] seminar will be hosted at the London office of Simmons & Simmons, where partner [and MARQUES activist] David Stone describes the European Commission’s ongoing review of the European trademark system as “almost a once in a lifetime opportunity”. But, in preparing for the seminar tomorrow, he finds that the co-existence notion may provoke the hottest debate.
The study states on page 139 (that’s page 150 of the pdf):“The registration and use of subsequent national trade marks in a member state remote from the part of the community where a conflicting earlier CTM, which has been registered for a period of at least 15 years, was used should be allowed provided that the later mark was applied for in good faith. Such registrations should co-exist with the earlier CTM which continues to be valid and enforceable and may also be used in that member state. It should be explicitly set out in the rule that it only applies to CTMs if only minimal use of the CTM has been made in a part of the community which is distant from the relevant member state.”Stone comments: “This concept seems to me to be daft – it certainly wasn't something users were asking for or asked about. But my main concern is that it would drive a coach and horses through the notion of a CTM being a unitary right – the backbone to the CTM system.”
He’s not alone in finding this matter worthy of debate. Birgit Clark, a [Kat and a Class 46 blogger as well as a] trademark attorney at Berwin Leighton Paisner and regular commentator on European issues, told WTR that the co-existence proposal “should give rise to a lively discussion”. It is not clear what the national IP offices think of it just yet. Few have said anything publicly in response to the study, except to say that they are giving it some thought. But the UK Intellectual Property Office is despatching Allan James, the head of its trademark tribunal, to the seminar tomorrow. James appeared to acknowledge the problem that inspired the co-existence proposal, but not the recommendation itself. “The problem of the growing ‘cluttering’ of registers is covered [in the study],” he told WTR, “but the study has relatively few ideas in this area.”
James went on to say that the study has some good ideas for building on the success of the CTM system. “Particularly that seniority claims should have immediate effect and that acquired distinctiveness should be assessed against the European Union as a whole, rather than in each member state,” he said. “The latter does not sit well with the proposal that only holders of ‘nationwide’ unregistered rights should, in future, be able to oppose new CTMs.” [Merpel speculates that this will result in more marks sailing through to registration and more troubles once they're granted ...]
Of further interest to James and his colleagues in national offices across the community is the study’s perspective on their role within the European system. They have no doubt read with relief the study’s statement that “without well functioning national offices the present system would no longer exist and European trademark law would have to be fundamentally revised”. With this assertion, the study has ensured that the question over exactly what offices can do to justify their existence beyond registering national rights will remain on the agenda beyond tomorrow’s seminar. Users must play their part in this discussion. As Stone says, “It will be important to let the Commission know what will work in practice, before the legislative process gets underway.”
Tomorrow’s seminar should certainly kick something off. Clark predicts the discussion to be animated. “We have speakers from different backgrounds: academics, practitioners and an appointed person. What more could you wish for?”". [Compulsory translation of all major OHIM and General Court decisions into English is something that at least one Kat is wishing for ...]
