The system of registering a trade mark should be the first line of defence for brand owners. When it works, trouble is avoided without the brand owner having to lift a finger or even knowing that there could be trouble ahead. However, those who work in the area of brand protection and brand creation must do their jobs properly and understand the potential pitfalls.
There are two recent decisions by the Registrar of Trade Marks*. The outcome of both would be unremarkable to anyone with a modicum of understanding of the law of trade marks. However, the cases highlight a trend which should be of concern to UK business.
The first case involved an application by the Executors of the Estate of Diana Princess of Wales to register the following trade mark:
It was opposed by Dalan Kimya Endustri of Izmir, Turkey who had previously registered on the European Community Trade Mark Register DIANA for the same range of goods. The hearing officer held the marks not to be identical, but had no difficulty in finding that the marks were so close that confusion was inevitable. This means that the Estate has lost the opportunity of trade mark registration for a range of cosmetics and perfumes and the financial benefits that would follow - and because this is a matter of Community trade mark law, use of the Diana signature mark would be an infringement of the earlier trade mark registration in any EU country.
The second case involved an application by Scottish Value Management Limited to register MERLIN for a range of “financial services”. The mark had been created for S.V.M. and a search revealed an earlier registration for MERLIN in respect of “provision of venture capital to the pharmaceutical and bioscientific sectors”. It was felt that because of the specialist market there would be no confusion. Nonetheless the owners of the earlier registration opposed and the hearing officer held that the marks were identical and that S.V.M. products would include “venture capital services”. The opposition was upheld. Nothing strange or out of the ordinary with this decision.
The concerns are:
- How did the Registrar allow the two applications reach the stage of being accepted? The earlier marks were the same or so similar and the hearing officer had no difficulty in rejecting the applications.
- The applicants in each case could have resolved the problems before filing or committing to a name when it had already been registered.
The Registrar has been toying with the idea of dispensing with an official search. This would bring the UK Trade Marks Registry in line with the European Registry where it is left to the owners of existing registrations to police their rights. It would appear that the examiners at the UK Registry are introducing this through the back door or perhaps they are simply they are not doing a proper check of earlier rights. How else could the identical mark for the same goods/services be accepted? Further, UK companies are not giving proper regard to the scope and power of registered trade mark rights.
What can business learn from this:-
- Anyone involved with new brands or brand extensions should be well advised to undertake a search of both the UK and European TM registers and to take advice on the consequences of potential conflicts. It is foolhardy to develop a new brand when a quick and inexpensive search will reveal the earlier rights.
- The owners of a UK trade mark registration can no longer rely on the UK Trade Marks Registry to undertake a full and detailed search of earlier rights. The European Trade Mark office decided when it was first established that it would accept an application notwithstanding earlier rights, the principal being that owners of earlier rights should defend their rights. We are moving in that direction at the UK Registry also. This is a concept which is not fully appreciated by UK businesses.
- A professional watch service must be put in place. Clearly the two opponents in these cases had warning of the applications and were able to defend their rights. Had they not opposed the marks would have been registered.
* Application No.2295012 by SVM Management & Opposition No.90950 by Merlin Biosciences Limited - decision of 24th June, 2004 of Mr. David Landau.
Application No.2161371by The Executrices of the Estate of Diana Princess of Wales & Opposition No. 50459 by Dalan Kimya Endustri A.S - decision of 5 th July, 2004 of Mr. George Salthouse
