IN THE DISPUTE AT THE PATENT OFFICE Essay Example

IN THE DISPUTE AT THE PATENT OFFICE Essay Example IN THE DISPUTE AT THE PATENT OFFICE Essay IN THE DISPUTE AT THE PATENT OFFICE Essay IN THE DISPUTE AT THE PATENT COURT REGARDING MR. BURNS’ TRADE MARK APPLICATION Opinion I am asked to rede Mr Burns in respects to a difference originating from two hallmark applications, which have been challenged by a figure of parties. The applier has submitted two applications for trade grade enrollment, one affecting a word only’ enrollment ( Burnsey’s Bread ) , and a word and device mark’ application, which has been herein submitted as Appendix 3. I will later rede on the virtue of each resistance to the applications, and the suggested responses, separately. Ms Nadine Burns Ms Burns has challenged the enrollment of the word, Burnsey’s Bread , on the footing of subdivision 5 ( 4 ) of theTrademarks Act 1994, which regulates the construct of passing off’ . Ms Burns runs a bakeshop, which is in an indistinguishable line of concern to that of Mr Burns, and trades under the name of Burns the Bread , and Burns the Bread Again . I have discovered, by manner of seeking the public database of the Patent Office, that Ms Burns’ trading names are non registered trade Markss, and therefore overcast the direct application of the jurisprudence in this respect. However, subdivision 5 ( 4 ) ( a ) of theTrademarks Act 1994allows for a trade grade enrollment to be disallowed by virtuousness of any regulation of law†¦ protecting an unregistered trade grade or other mark used in the class of trade . Case jurisprudence has indicated that a passing off action must incorporate three demands to win: ( a ) the being of the claimant’s good will ; ( B ) a deceit ; and ( degree Celsius ) harm ( or probably harm ) to the plaintiff’s good will or repute:Reckitt A ; Colman Products Ltd v Borden Inc[ 1990 ] 1 All ER 873 ( per Lord Oliver ) . The tribunals have defined the first demand, the claimant’s good will, as a repute that has been gained by the house over the class of old ages of honest work, or by a significant outgo of money:Trego V Hunt[ 1895 ] AC 7. Given that both of Ms Burns’ bakeshops have been runing for seven old ages, it is sensible to presume under jurisprudence that Ms Burn’s has gained sufficient good will to fulfill this trial in its pure signifier. However, one must see how far this good will extends geographically, and whether it affects Mr Burn’s trade grade application. It may be possible for Mr Burns to register the trade grade on the footing that Ms Burns has non achieved good will on a big plenty graduated table to impact Mr Burn’s concern, provided that the two companies’ service radius does non overlap:Maxim’s Ltd V Dye[ 1977 ] 1 WLR 1155 ;Sheraton Corp of America v Sheraton Motels[ 1964 ] RPC 202. In respects to the 2nd trial, deceit, the action would necessitate to fulfill the trial as to confusion of beginning, which means that the populace may be placed in a state of affairs where they may be confused as to where the merchandise came from, or who supplied it:Coombe International V Scholl[ 1977 ] RPC 1. Case jurisprudence besides implies the impression of the reasonable consumer’ , in other words, would a sensible individual in the consumer’s place be expected to be able to clearly and easy separate between the two beginnings?Morning Star v Express Newspapers[ 1979 ] FSR 113. Additionally, the deceit besides needs to happen in similar industries, otherwise tribunals will by and large keep that a deceit has non occurred:McCulloch V May[ 1947 ] 2 All ER 845 ;Stringfellow V McCain Foods[ 1984 ] RPC 501. Sing these demands of the deceit trial, it would look that Ms Burns may hold cause for action in this respect. When one considers Burnsey’s Bread and Burns the Bread has similar representations, are in the same industry and may overcast the public’s ability to do a clear differentiation between the two concerns, it may be that the Patent Office will make up ones mind in favor of Ms Burns in footings of deceit. The concluding demand for a passing off action to win is for there to be harm, or likely harm, to the claimant’s repute as a consequence of this trade grade enrollment. This harm need non be touchable:Taittinger SA V Allbev Ltd[ 1993 ] FSR 641 ;Choccosuisse Union des Fabricants Suisse de Chocolat A ; Others v Cadbury Ltd[ 1998 ] RPC 117. In this respect, it may be possible that, should Mr Burns seek to put up a franchise in the same local country as Ms Burns, so the deceit may do some confusion to clients, and therefore below the belt affect Ms Burns’ repute based upon this deceit and confusion. As the instance jurisprudence suggests, the likely harm to reputation need non be touchable in order to fall within the wide and distinguishable class of harm. It would look that Ms Burns may hold evidences to fulfill the harm trial. In drumhead, Ms Burns may hold evidences to seek protection of her unregistered right to the name Burns the Bread . This right comes under subdivision 5 ( 4 ) ( a ) of theTrademarks Act 1994, and has been elaborated upon by many case in points. If Ms Burns were successful in her action, so she may seek an interlocutory injunction that would curtail Mr Burns’ ability to utilize that trade grade in the class of concern:American Cyanamid Co v Ethicon Ltd[ 1975 ] AC 396 ( per Lord Diplock ) . However, it may be in the best involvements of Mr Burns to seek a determination by the office that would register the trade grade, on the footing that Mr Burns undertakes non to run a concern that would straight vie with Burns the Bread in the same local geographic country. If Mr Burns was to do this project, so the bench may seek to keep that Ms Burns’ good will is non sufficient on a national graduated table to amount to show protection across the state. This would, in bend, mean tha t the Patent Office should disregard the challenge and registry Mr Burns’ trade grade. Mr Munch Mr Munch has written to Mr Burns in resistance to the proposed enrollment of the word trade grade, on the footing of the comparative evidences given under subdivision 5 ( 2 ) of theTrademarks Act 1994. These commissariats prohibit the enrollment of trade Markss that are indistinguishable to one registered earlier, or similar to an earlier enrollment which may take to confusion of the populace, and possible association between the two trade Markss. The two Markss must besides be in the same industry in order for protection under these commissariats to be given. Mr Munch’s trade grade was published for resistance intents on 14ThursdayMarch 2006, harmonizing to the registry of the UK Patent Office. Mr Munch has made an application in category 43 sing proviso of catering services, which is a category identical to that of Mr Burns. While Mr Munch’s grade is non at full enrollment position by the Patent Office, subdivision 6 ( 1 ) of theTrademarks Act 1994defines an earlier grade as being one which has a day of the month of application for enrollment earlier than that of the trade grade in question . Mr Munch’s initial application to the Patent Office was made on 19ThursdayDecember 2005. The common jurisprudence besides gives rise to an statement that if an applier can turn out that his or her services are provided in a different industry to that of the opposition, so enrollment will be allowed:Seahorse Trade Mark[ 1980 ] RPC 250. While it is clear that both parties to the difference have filed for enrollment of trade Markss in category 43 ( sing proviso of catering services ) , merely Mr Burns has filed in the category 30 class ( bakery merchandises ) . It would hence be sensible to reason that the two parties are in separate industries, given that Mr Burns merely supplies providing merchandises in so far as supplying mass measures of his merchandise to consumers. Mr Munch, on the other manus, specialises in big scale events, which Mr Burns does non make. Mr Munch is non a baker, and hence it would be unreasonable for this resistance to be allowed on this footing. Another common jurisprudence trial is available sing phonetically similar word Markss. Under this trial, a trade grade would non be registered if it was deemed to be phonetically similar to an earlier registered trade grade ; in so far that it would do confusion as to the beginning of the goods or services:Aristoc V Rysta[ 1945 ] AC 68. Given that the two trade Markss are non at all similar in pronunciation or sentence structure, it would be impossible for the opposition to fulfill this trial, and therefore win in an action under subdivision 5 ( 2 ) ( B ) of theTrademarks Act 1994. Overall, it would look improbable that Mr Munch would accomplish success in his resistance to the trade grade enrollment application made by Mr Burns. The earlier trade grade that Mr Munch holds the rights to, while registered and recognised for the intents of resistance in conformity to subdivision 6 ( 1 ) of theTrademarks Act 1994, does non bear important similarities to Mr Burns’ trade grade, nor does it impact the class of concern of Mr Munch in any direct manner. It has been established that the concerns of Mr Munch and Mr Burns are in separate and distinguishable industries, even though they fall within the same category for trade grade enrollment intents. It would be unreasonable for a tribunal to presume that the two trade Markss conflict with one another, as the two parties go about their concern in separate ways. Mr Burns runs a bakeshop store, while Mr Munch runs corporate events. It would be insufficient of the opposition to trust upon the statement that they have gained such important credibleness on a national and international graduated table that any usage by Mr Burns of a similar trade grade may impact upon this good will, irrespective of the industry:Oasis Shop Ltd’s Trade Mark Application[ 1998 ] RPC 631. TheOasisinstance besides bears significance in the sense that the two trade Markss in inquiry in that instance were similar, if non virtually indistinguishable, in a phonic sense. In Mr Burns’ instance, his trade grade bears small or no resemblance to an earlier registered trade grade, apart from the sharing of one word, and can non be opposed in this respect. It would be my recommendation that Mr Burns bespeak a hearing from the Patent Office, which would give him the chance to show his instance. This is to guarantee that the resistance is dealt with reasonably, and in conformity with the rules of the regulation of jurisprudence. Currently, Mr Munch has non requested a hearing through official channels from the Patent Office, which signifies that he does non desire to give Mr Burns the right of answer ; instead he intends to take action by private agencies with the Patent Office. It may good be that the Patent Office will bespeak a hearing of their ain agreement, but by bespeaking a hearing, Mr Burns would be covered in the event of absence of any such action, and it would let the Patent Office to hear both sides of the instance reasonably and in conformity with natural justness. It would hence be my sentiment that the opposition, Mr Burns, does non hold sufficient evidences to prolong an interlocutory opinion against Mr Burns, curtailing him from utilizing the grade ( or to seek amendss ) , by trusting upon subdivision 5 ( 2 ) of theTrademarks Act 1994. The two Markss are non indistinguishable, and bears small to no resemblance to one another. Mr David Burns Mr David Burns ( the opponent ) has lodged a protest against the enrollment of the device depicted in Appendix 1, submitted by Mr Burns ( the applicant ) . This challenge is made under subdivision 3 of theTrademarks Act 1994( sing the device being devoid of any distinguishable character ) , and subdivision 5 ( 2 ) of the same Act ( sing similarities to earlier registered trade Markss ) . The opposition holds the rights to the trade grade attached to this papers as Appendix 3, officially known to the Patents Office as Trade Mark Number 2311787. This image depicts a conventionalized image based on a loaf of staff of life, every bit good as the words Burnsey. Eat. Drink . The image is an artist’s feeling. The applicant’s design submitted for enrollment depicts an image of a chopped loaf of staff of life, which has non been stylised or artistically altered in any manner. Additionally, it contains the phrase Burnsey’s Bread . In respects to the resistance under subdivision 3 of theTrademarks Act 1994, such a proviso prevents trade Markss from being registered if they do non show any elements of peculiarity, or individualism, that makes that peculiar owner unique from other concerns in a similar line of work:AD2000 Trade Mark[ 1997 ] RPC 168 ;Proctor A ; Gamble’s Trade Mark Application[ 1999 ] RPC 673. This definition by the tribunal has been specialised to keep that trade Markss which depict the goods or services to which they are applied can non be held as distinctive:H. Quennel Ltd’s Application[ 1954 ] 72 RPC 36. In sing these common jurisprudence readings of subdivision 3 of theTrademarks Act 1994in the applicant’s fortunes, it is clear that there are sufficient evidences for this enrollment to be opposed. It would most likely by the opponent’s statement that, because the device merely depicts staff of life, and non in any typical signifier, it would non be possible to hol d this device registered in conformity with the Act. This can be deduced by mention to the opponent’s registered grade, which uses a conventionalized artistic design to separate the concern and its goods and services. Given this clear deficiency of differentiation, it would look that the opposition has a valid instance in jurisprudence, under subdivision 3 ( B ) of the Act, to hold this enrollment dismissed under absolute evidences. The opposition besides makes an extra claim, mentioning subdivision 5 ( 2 ) of theTrademarks Act 1994as comparative evidences for refusal. To confirm such a claim, it by and large requires an premise to be made by the tribunals, based upon some finding of fact. Under subdivision 6 ( 1 ) of the above Act, any trade grade that has an earlier initial application day of the month than the applicant’s will be considered an earlier mark for the intents of subdivision 5 ( 2 ) and, given that the opposition made the application on 3rdOctober 2002, this is clearly the instance. Furthermore, if the opposition can turn out that the applicant’s trade grade is in a similar industry to his or her ain, and such a grade would do confusion in the public head as to the beginning of the goods, so the grade may non be registered:Seahorse Trade Mark[ 1980 ] RPC 250 ;Aristoc V Rysta[ 1945 ] AC 68. Given that the applicant’s grade is virtually indistinguishable, nevertheless non expres sly, so this may be evidences for non enrollment. The applicant’s grade appears on the device as Burnsey’s Bread . The opponent’s appears as Burnsey. Eat. Drink. . This may do the populace to believe that the opponent’s grade is simply an alternate version of the applicant’s, and therefore they may be confused as to who really provided the goods. Therefore, the opposition would most likely win in seeking an interlocutory opinion forestalling the enrollment and usage of the applicant’s trade grade in its current signifier. It would be my recommendation that the applicant seek to amend his design, based upon the strength of the opposition’s instance in this affair. There is small opportunity of success if the applicant seeks to prosecute enrollment of the word and device grade in its current signifier. It would be in the applicant’s best involvements to do the image and words something typical and non-similar to others, possibly by utilizing a anonym and a conventionalized artistic design. General Conclusions Based on the information presented to me for sentiment, I would propose that Mr Burns has ground to seek to hold the word trade grade registered, nevertheless I would urge discontinuation of proceedings of the word and device grade. The resistance to the word merely trade grade seems to miss significant virtue, and may be easy defeated at a hearing by the Patents Court. However, the word and design trade grade present a figure of issues that would necessitate to be resolved before it could be passed. There is no clear defense mechanism at jurisprudence which would let the trade grade to be passed in its current province, given its similarities to other trade Markss in its industry. Therefore, I would rede Mr Burns to travel to a hearing at the Patents Court to settle the affairs between himself and Mr Munch and Ms Burns, for the grounds I have outlined above. The jurisprudence proves that Mr Burns may hold a instance against these two parties. Bibliography Books Bently, L and Sherman, B,Intellectual Property Law( 2001, 2neodymiumerectile dysfunction ) , London: Oxford University Press Cornish, W and Llewelyn, D,Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights( 2003, 5Thursdayerectile dysfunction ) , London: Sweet and Maxwell Hart, T and Fazzani, L,Intellectual Property Law( 2004, 3rderectile dysfunction ) , London: Palgrave Phillips, J ( erectile dysfunction ) ,Butterworths Intellectual Property Law Handbook( 2003, 6Thursdayerectile dysfunction ) , London: Butterworths Phillips, J, and Firth, A,Introduction to Intellectual Property Law( 2001, 4Thursdayerectile dysfunction ) , London: Butterworths Legislation Trademarks Act 1994 Cases AD2000 Trade Mark[ 1997 ] RPC 168 American Cyanamid Co v Ethicon Ltd[ 1975 ] AC 396 Aristoc V Rysta[ 1945 ] AC 68 Choccosuisse Union des Fabricants Suisse de Chocolat A ; Others v Cadbury Ltd[ 1998 ] RPC 117 Coombe International V Scholl[ 1977 ] RPC 1 H. Quennel Ltd’s Application[ 1954 ] 72 RPC 36 Maxim’s Ltd V Dye[ 1977 ] 1 WLR 1155 McCulloch V May[ 1947 ] 2 All ER 845 Morning Star v Express Newspapers[ 1979 ] FSR 113 Oasis Shop Ltd’s Trade Mark Application[ 1998 ] RPC 631 Proctor A ; Gamble’s Trade Mark Application[ 1999 ] RPC 673 Reckitt A ; Colman Products Ltd v Borden Inc[ 1990 ] 1 All ER 873 Seahorse Trade Mark[ 1980 ] RPC 250 Sheraton Corp of America v Sheraton Motels[ 1964 ] RPC 202 Stringfellow V McCain Foods[ 1984 ] RPC 501 Taittinger SA V Allbev Ltd[ 1993 ] FSR 641 Trego V Hunt[ 1895 ] AC 7