A visit to London from Alicante: OHIM British Day Postcard

Westminster Abbey on 5 June 2013 with commonwealth flags

The flags were still flying outside Westminster Abbey in honour of the 60th anniversary of the Coronation as members of the UK profession gathered to meet OHIM and UK officials  at 1 Victoria Street ( the well-appointed BIS Westminster Conference center)   nearby to share the hospitality of OHIM at OHIM British Day. We were honoured by the presence of President, António Campinos as well as the exuberant Inge Buffalo and Dimitros Botos. On the UK side John Alty as Comptroller was there with Sean Dennehey who is now responsible for both patent and trade mark operations within the UK office. It seems that a visit with the Minister may have been responsible for the delayed start and late arrival of the leaders.

Now that the UK IPO and OHIM are using the same IT engine (in the UK its called TM10)  for managing their trade mark databases, can we expect even greater convergence? 
OHIM continues to emphasise timeliness as the core of its Quality metric and there is no doubt that, in some areas, it is impressive with designs being registered within a matter of hours. I did take the opportunity to express concern that the Board of Appeals and subsequent appeals were often not timely at all and where this resulted in enforcement delays as with cancellation actions, that was not the quality brand owners needed. However that was perhaps the only *meanness* (their word) shown to the OHIM delegation at least in the public morning session. I cannot say whether the private afternoon session with ITMA and other representatives of the interests was more contentious.

It seems there will be a new OHIM website going live at the end of the year. Its services will be piloted with the biggest users - so not you and me. I spoke to two representatives of said biggest users over the lavish refreshments and learned that despite the volume of business they do with OHIM they do not yet use MyPage. Maybe they need to take some consultancy from solos like us on how to be efficient in a paperless way.

We heard about the tools being created under the Co-operation Fund  programme under the auspices of the European Trademarks and Design Network (ETDN) .That link will take you to their new page and the interesting tools they are working on. Some like the similarity tool you can play with and there are plans to integrate them with the mainstream in due course. Classification and its convergence has attracted a lot of post IP TRANSLATOR interest, not all of it now hostile. There seems to be a new recognition that clarity of specifications without the wild land grabs made possible by class headings in three classes is desirable. Nevertheless the imperatives of translation have led to an assessment that only 11 sub parts of the WIPO class headings are in fact insufficiently clear leaving 186 phrases you can use following a report made in May 2013. Meanwhile, if you need real IP translating the translate button in Euroclass now renamed TMClass as it is not limited to Europe, works miracles of high quality translation of specification terms useful for your global portfolio.

The Observatory also had its own presentation and is set to become an important policy setter. Its principle immediate objective is to complete research on mapping the landscape of IP enforcement  and that means understanding citizens' perceptions of it and they do mean copyright as well as patents and trade marks. The US has reported that 27.7% of jobs are IP related and 34.8% of US GDP is IP related. We should soon have comparable figures for Europe and they are not expected to be uniform across the region. Once we know, expect to see IP campaigns coming to a cinema screen near you. The IP toolkit will give you an idea of the messages you are likely to hear.

OHIM intend to *Keep Walking* towards a more efficient future and we hope to be by their side in this journey which we all hope will benefit European jobs and economies.

IP attorneys: would you want your daughter to marry one?

This blogger has just read the following media release:

Today, Lawyers.com is releasing findings from a new survey asking parents if they want their child to grow up and become or marry a lawyer. Highlights from the survey include: 

• 64% of survey respondents with children in the household want their child to become a lawyer.

• Moms (55%) are more likely to be interested in having a lawyer as a son- or daughter-in-law than dads (38%).

·         80% of parents with household incomes of less than $25,000 per year said they’d like their child to become a lawyer, versus 54% of those with household incomes over $75,000. 

Full details are in the release below and on the Lawyers.com blog.

It seems strange that, in a jurisdiction in which lawyers are so widely disliked, distrusted and generally subjected to generalised abuse (just key 'lawyer jokes' into your favourite search engine and see what you get). However, the perception that lawyers earn a lot of money is widely held, as is the faith that a lawyer in the family will do whatever damage he or she does outside rather than within his or own domestic patch, in much the same way as cats like to use other people's gardens as lavatory facilities rather than soil their own.

It would be good to know how many people polled would, if informed of the option, prefer their child to be or to marry a patent or trade mark attorney -- even if they knew the truth about what many IP practitioners, particularly those working in-house or for themselves, were actually taking home after deductions for tax, social security, pensions and whatever.

Lost in Translation : Trademarks

Buy the music instead

One of the issues that often vexes me is why a word may be registrable as a trade mark in Europe but not in the US or, far more commonly, vice versa. A change that the European commission intends to introduce to both the Community Trademark Regulation and to the Directive in the current revision proposals may bring some harmony in the area of foreign language marks. This is an extension to the absolute grounds for refusing a trademark to allow an objection such as descriptiveness to be raised notwithstanding that the grounds of non-registrability obtain only where a trademark in a foreign language or script is translated or transcribed in any script or official language of a member state.
There is also going to be an obligation on applicants to provide a translation or transcription.
Now this may make sense for the European problem of having community registrations for composite mattress marks from Germany refused because of the now highly distinctive and famous MATRATZEN registrations in Spain, but does it go too far? Will Chinese and Arabic marks  highly distinctive in Europe suddenly find themselves refused as descriptive. Will we find that our invented words are considered to be transcribed versions of Chinese characters. This new absolute ground could be quite a nightmare and it certainly attracted most interest at the Marques conference on Monday.
They already have this rule in America but it isn't an absolute embargo as this legislation seems to impose.  The "ordinary American purchaser" has to be likely to stop and translate the foreign words into its English equivalent. While it seems fair that a community trademark as a unitary right should be denied registration if they can't be distinctive across the whole of the European Union, why do we have to put this into national legislation? Is the British consumer to be denied hypothetically descriptive marks in the Greek script?  The Max Planck study concluded that there was no need to clarify or otherwise amend article 7 (2) CTMR but it seems the commission disagrees. While no doubt this may be a welcome change for the minority languages spoken in Europe which are not recognised as official languages so dont get considered in Alicante towers, it does seem a little overwhelming to protect every language in the world in this way.
The objection can be overcome by acquired distinctiveness but we all know that that is very difficult to prove. If nothing happens, the brand creators will have to move all those obscure languages dictionaries from their creative resources to the desks of those who try to clear their suggestions. If your trademark can be translated better get it registered in Europe while you can and don't forget to use a great value solo practitioner to help you.

Do you really matter?

The hardest message to
get across to a prospective
client ...?

No, this isn't an attempt to be rude or to undermine your confidence -- it's an allusion to a paper which was discussed yesterday in one of the International Trademark Association's Scholarship sessions, "Do Trademark Lawyers Matter?" (you can see the abstract here), in which the authors -- Deborah R. Gerhardt and Jon P. McClanahan -- sought to explain their findings, which were based on getting on for 30 years' worth of filing and grant data from the United States Patent and Trademark Office (a note on this session was published on the IPKat here).

At base, there are three factors that tend to influence the success of a US trade mark application. One lies beyond the control of the applicant, and that is whether the application is opposed or not. Unsurprisingly, unopposed applications fare far better than the other sort. The other two factors are however highly significant: statistical analysis of a vast quantity of data suggests that (i) trade mark applicants who are legally represented tend to fare better than those who do not, and that (ii) experience, in the long run, is as good a predictor of success as is being legally represented.

One challenge for any solo or small practitioner is to explain to an often ill-funded and undercapitalised client why, when trade mark registration is open to all and when trade mark registries are increasingly user-friendly, it may still be necessary to instruct a professionally qualified and, ideally, experienced, representative rather than take the do-it-yourself route.  This research by Gerhardt and McClanahan provides much material to strengthen the hand of the practitioner when selling his or her services.

Better than being a penguin? Solos flock to INTA

Fact: the coat of the adult penguin has
nowhere to store one's business cards

A recent tweet from Twitter diva and SOLO IP Blog founder Barbara Cookson reveals that next month's International Trademark Association (INTA) Meeting -- now seemingly rebranded #inta13 -- has already attracted 166 solo IP practitioner registrants. As well as offering wonderful opportunities for networking with people who aren't going to ask embarrassing questions about how big your litigation and dispute resolution team is, this poses challenges the most important of which is how the 166 (the number may have risen by now) are going to find one another.  In this context readers may wish to ponder on the following random observations:

* Many solo and small-firm practitioners look just like people who practise with large firms. Indeed, last year some of them may indeed have been practising with large firms and have not yet ditched last year's Armani suits and Louboutin heels in favour of the altogether humbler attire of the one-man/woman band. 

* There is no equivalent of the Masonic handshake that enables those who work in small practitioners to identify one other.  Perhaps an app should be developed in time for #inta14 which will enable the hand-held mobile device of a soloist to give off a discreet buzz when another soloist is within a 10 metre radius. 

* Speed-dating has been kindly organised for small practitioners, gregarious folk and the merely curious to meet briefly, exchange cards, make eye contact and then terminate the relationship without any sense of awkwardness within the rules of engagement.  This facility has proved popular -- but is its popularity based more on the fact that it enables people to meet, or to save time? 

* Penguins have demonstrated to generations of wildlife photographers that they have a remarkable knack of finding each other in even the largest of crowds, notwithstanding the fact that they all look pretty much the same. This may be something to do with the fact that their survival depends on it. It would be good to know if IP solo practitioners fare as well in Dallas this year.  

If you do, or don't, have success in locating your own kind, do write to us at SOLO IP and let us know your experiences.  You may not have found them interesting or valuable, but there's a good chance that you'll strike a chord or two with our readership.

Likelihood of Confucius? How about merging with a Chinese mega-firm

A recent report in The Lawyer relates the story of a small Israeli commercial and high-tech law firm, Eyal Khayat, Zolty, Neiger & Co. -- a three-partner practice which has suddenly acquired the ability to cast a giant shadow through its merger with Chinese giant Yingke. The Beijing-based firm has offices in more than twenty cities on its home turf and another 16 outside China. Altogether it employs more than 2,000 lawyers.  Yingke now has an office in Israel too, in Hertzlia Pituach, within easy reach of so much of the country's high-tech industry.

This blogger was initially fascinated about the 12-month negotiation period which culminated in the merger. After all, a whole year might seem a long time for what has been described as a "brand merger without full financial integration". What lay at the heart of discussions? Was it the decision as to whether the firm should function in Chinese or in Hebrew? Or the struggle to convey the right message through the trilingual logo with its somewhat allusive symbol?  No matter, the deal was struck.

It then occurred to this blogger that many a small IP practice might want to consider emulating Eyal Khayat, Zolty, Neiger & Co. by finding a massive Chinese firm with which to partner. In the olden days, IP work generally went in one direction, but now China is filing patents, designs, utility models and trade marks outside its home jurisdiction quicker than you can say "Confucius!" and the prospect of having a small foothold in a small non-Chinese country (and that's pretty well everywhere) might be well sold to an amenable Chinese giant.  No more worries about where the next instruction is coming from, either ....

Consultation Marathon

Since the announcement of the Fast Trade mark Opposition consultation from the UK IPO discussed below, we have the Patent side of the Office starting a consultation on even faster patent prosecution. It must be because they were coming up to today's blessedly peaceful and sunny Virgin London Marathon.

London 21 April 2013

The Law Commission also finally publishing their consultation on groundless threats.  This last weighs in at 174 pages so most of us will simply have to rely on the executive summary. I like the prospect that legal advisers will be exempt. The idea we might get an unfair competition tort is interesting too. Possibly not an idea to hide in something as abstruse as a groundless threats consultation though.
Weighing in with a threat of a threats action is often a rather unethical practice. The last letter I received gave me a short time to respond so I did not as it was mostly groundless as we were discussing a service mark.
The super-fast patent paper is reasonably short and hopefully CIPA will be on to it. By the way, this is not for the small inventor or SME - a marathon fee of £3500-£4000 is proposed but you don't have to give reasons for paying it. There do not seem to be many situations where the normal expedited prosecution is inadequate, but if this procedure becomes available there does not seem much incentive for the IPO to do it for free when they could have a fat fee and a few extra home comforts in Newport.