PAPER: FC5 MARKS AWARDED: 56

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1 PAPER: FC5 MARKS AWARDED: 56 Question 1 a) 'Unitary in character' means that the CTM has equivalent affect throughout each member state of the Community. It can only be dealt with (e.g. assigned, mortgaged) as a single right for the whole Community, licensing is an exception, as different licenses can be granted to cover diff parts of the Community. b) In practice, means that if CTM invalidated or revoked, in one member state of the Community it is invalidated or revoked in respect of all member states of the Community ("central attack" - if CTM application) Question 2 Applicant files a request at the UK IPO containing - request for registration of a mark. - a representation of the mark - his name & address (ie identifying info) - the goods and/or services for which he is seeking registration. MARKS AWARDED 3/5 to the application these are needed for UK IPO to give a date of filing. Need to pay the application fee (basic fee + class fee for each class in excess of one) on filing (extendible) If priority to an earlier mark/application is to be claimed, this needs to be done on filing and within 6 months of the date of filing of the application from which priority is claimed (priority deadline not extendible) The UK IPO may undertake a search to the extent deemed necessary. The UK IPO, once the application has been given a filing date and application number (ie essential requirements above have been met) will do a formalities check for other info required for the application. If anything is missing or there are any formal defects, the UK IPO notifies the applicant who must correct these within 2 months from notification. N.B. UK IPO does not generally examine priority claims in TM app's, but filing certified copy of the priority application (by the applicant) is good practice. 1

2 UK IPO then examines on absolute + relative grounds + issues an examination report if objections are raised. Question 3 a) If a UK TM application is for : MARKS AWARDED 3.5/5 - a sign identical with an earlier mark and is to be registered for goods or services identical to those of the earlier mark; - a sign is identical with an earlier mark and is to be registered for similar goods or services to those of the earlier mark; - a sign is similar to an earlier mark and is to be registered for goods or services identical with or similar to those of an earlier mark; then there exist relative grounds for refusal of the application. A new UK TM application is searched on this basis. b) Passing off. c) Earlier rights - registered UK design right - copyright (UK) - unregistered UK design right Question 4 a) File 3rd party observations b) There is no fee for filing 3rd party observations MARKS AWARDED 4/5 Observations are filed at the UK IPO. They can be made anonymously. They can be filed at time after publication for opposition but before registration of the application on which observations are being made. Write a letter & send to UK IPO indicating why the application should be refused, an absolute grounds and/or relative grounds. In this case, appears that would be incapable of distinguishing, and may relate to geographical origin/or if not, then liable to mislead the public). 3rd party observations are only taken in to account after the period for opposition has expired, so they cannot be used to avoid the need for an opposition, as the UK IPO may not agree with the observations & register the mark anyway. MARKS AWARDED 3/5 2

3 Question 5 a) 3rd parties have 3 months from publication of a CTM application to file opposition; the term is not extendible b) Opposition must be on relative grounds. anyone with an earlier mark or right can oppose a CTM application (ie any proprietor of an earlier mark/right, whether registered or unregistered) c) Valid opposition requires (amongst others) the application number of the CTM application being opposed, and the grounds of opposition to be stated. Question 6 Grounds for revocation of a CTM include: MARKS AWARDED 3/5 a) Non - use of the CTM for a continuous period of 5 years since registration, where the lack of use means it has not been used anywhere in the Community, There must be no proper reasons for non-user to revoke on this ground. Use in relation to non registered goods/services does not qualify as use of the CTM. b) The CTM is of such a nature a liable to mislead the public regarding the nature, quality or geographical origin of the goods/services. d) Due to acts or inactivity on the part of the proprietor, the CTM has become common in relation to the goods or services concerned (registered) Question 7 MARKS AWARDED 5/5 a) Deadline for conversion is 3 months from notification by OHIM that the CTM has been refused. This is non-extendible. b) To convert the CTM, need to write to OHIM and: - request conversion - state the member states for which conversion is requested - pay the conversion fee - state the goods/services (for each member state requested( which are sought for the converted application(s) 3

4 c) National Fees may need to be paid to each national office. May need evidence to overcome objections from the national offices if they are minded to refuse the application - 3 months from notification to provide evidence. Question 9 MARKS AWARDED 3/5 Arts, 34 & 35 relate to the fact that no restrictions shall be placed on the import or export of goods in to or out of the European Union. However if the goods are placed on the market by a proprietor outside the EU, he has the right to stop them entering the EU via another party as he has not exhausted his rights yet. However, if goods are placed on the market in the EU buy the proprietor, his rights to the prevent further dealing with those goods have been exhausted. He can however prevent further dealing if the goods are damaged, for example. Agreements that do not substantially affect trade as above & bring fair share of benefit for the public are allowable (de minimis) Question 10 MARKS AWARDED 2/5 a) If the US client tries to apply for the same mark, it will be refused on relative grounds (identical mark for identical goods) b) Observations (3rd party) - On absolute or relative grounds - No fee - Can be anonymous - File evidence that 3rd party application mark is not distinctive? - Only taken in to account after opposition period ends. So recommend doing both observations & opposition Opposition - File opposition within 2 months of the 3rd party application being published (extendible by 1 month State grounds of opposition, pay opposition fee, statement of Is the 3rd party entitled - did they file in bad faith? Absolute ground for refusal in UK Can file opposition absolute or relative grounds 4

5 Are they entitled to the UK TM app? - the 3rd party (not our client) - Can get "cooling off" period to negotiate (9 months extendible be another 9 months) Is licensing an option? unrelated 3rd party may not be competing. Wait for it to register then apply for revocation o more expensive & no guarantee of success. o Conduct own search for UK TMs to try & known out 3rd party application on relative grounds (via opposition/observations) Question 11 a) Ground for opposition relative grounds only (not absolute grounds) registered in bad faith 5 MARKS AWARDED 2.5/10 current applicant for CTM is not the entitled owner submit evidence to OHIM showing Japanese client is the owner of the mark & that selling products in EU via the distributor for several years. ie goodwill in the Community associated w/jp owner not distributor. b) No "passing off" law perse in CTMR, but can have and enforce unregistered trade mark (CTM rights) - Need to provide representation of the mark and state the goods/services it has been in use for. (when applying for opposition) Oppose on relative grounds only - earlier right in locality where unregistered mark/sign has been in continuous use re: certain goods or services prior to the CTM app in question. Question 13 MARKS AWARDED 2/12 a) Seniority is where there is an earlier identical registered trade mark in a Member state of the EU having a date of filing before that of the present CTM

6 application (or intended CTM application) and claiming seniority allows the date of filing to be kept (for the relevant state(s)) in the CTM application. Goods/services must be identical (or CTM G/S are a complete subset of then) Serves to allow national applications to lapse without any overall loss or rights. b) Sole effect is to preserve the pre-existing national rights of a party (inc. original scope, good/services and date of filing or registration) Cannot be used to extend goods/services; representation or mark must be identified c) Seniority can be claimed on filing a CTM application, within 2 months of filing a CTM application, or any time after registration of a CTM application. d) Procedure: - request seniority per (c) above at OHIM - State the application number of the earlier application from which seniority is claimed. - state date of filing or earlier national application - state goods or services covered in the earlier application for which seniority is claimed - if registered, state the date of registration of the earlier app. For each national earlier application which is relevant to the seniority claim. The goods/services of the CTM application/registration must be the same as (or a subset of) those of the earlier applications/registrations. If an application from which seniority is claimed lapses before the CTM application is registered, the seniority claim in respect of that state is lost. The CTM application and earlier applications must belong to the same proprietor. If successful seniority claim & CTM becomes registered can allow the national registrations/applications to lapse and not lose any rights. MARKS AWARDED 8/12 6

7 7 Question 14 a) If a "basic" application or registration is held by a proprietor in one of the Contracting States of the Madrid Protocol, the proprietor can file an application under the Madrid Protocol (MP based on that basic app or registration File at relevant National office (Office of Origin) The basic application\registration cannot have lapsed for filing a MP application. b) Basic fee Supplementary fee (for each class in excess of 3) Complementary fee (for each state designated) Publication fee c) Madrid Protocol: - Just an administrative system, not a granting authority - applies to 95 or so Contracting States, possibility of independent protection in up to all of these. - However, requires use of the (registered) mark in each country individually to avoid revocation in future in respect of those countries. - Protection under MP limited due to dependence on basic application or registration If lapses/revoked/invalidated\refused (the basic app/reg) in the first five years of the MP application, the MP application is automatically lost. can transform in to separate national applications if needed. - Individual countries examine app (different laws) CTM - Protection in only 38 or so countries of EU but expounds protection to cover new members of EU as they join. - grant for all countries at once, but unitary right can only deal with rights to all countries together (except licensing) - no need to use in every state of EU, can use in just one and no grounds for revocation re: non use. - can convert in to separate national applications if needed (if refused "centrally" at OHIM) - OHIM examines application - harmonised law & protection. MARKS AWARDED 10/12

8 Question 15 a) Transformation: - 3 months from refused or lapse of international application to request transformation - pay the transformation fee - indicate the states for which transformation is requested - indicate the goods/services requested for those states - allows for application to continue as separate national applications if the basic registration or application is low (lapses/refused/invalidated) in the first 5 years since the international MP application was filed. b) Conversion: - must be requested within 3 months of refused of CTM application (non extendible) - cannot request conversion if CTM revoked due to non use (unless there was use according to national law of relevant country for which conversion requested. - Cannot get conversion of CTM registration invalidated on absolute grounds. - Conversion can be used to get national trade mark rights back if CTM originally claimed seniority from national applications (or registrations) threat were subsequently allowed to lapse keep original date of filing/priority (for the states where applications/registrations originally existed) i.e. claim conversion National CTM National TM's seniority application TM's Need to specifically request conversion, pay the conversion fee, state the member states for which conversion is requested and state the goods/services for each national application that is to result from conversion. - National offices may need evidence depending on the reasons the CTM application was lost (ie evidence to overcome any objections) MARKS AWARDED 7/12 8