Published: 5 November 2010
By: Tiobr Gold
The following report on the latest official news is from the October 2010 issue of the CIPA Journal.
To confirm our report from the September issue, changes to the Civil Procedure Rules (CPR) and Practice Directions came into force on 1 October 2010. The Civil Procedure (Amendment No 2) Rules 2010, SI 2010 No. 1953 implement the changes to the CPR 63, and details of changes to the Practice Directions PD 63 are contained in the Practice-Direction-making document relating to the Patents County Court.
Research following the demise of SABIP
The IPO has created a new section on its website to set out its IP research programme and to re-publish research papers published by SABIP. Navigate from here.
USPTO-UKIPO joint statement on cooperation
The two offices have completed foundational work and preliminary studies and will begin work-sharing implementation [this month]. The initial phase of implementation will focus on maximizing re-use during examination of commonly filed applications by providing access to work completed and currently made available by each office. This will be combined with examiner training, data collection and analysis to gauge effectiveness and make necessary adjustments. At the same time the offices will work on such longer-term issues as easier access to each office’s application files to create a more robust work-sharing environment. (Extract from press release found here.)
Joint announcement of the continuation of the PPH pilot programme between the KIPO and the IPO
The Korean Intellectual Property Office (KIPO) and the IPO jointly announced that the KIPO-UKIPO Patent Prosecution Highway pilot programme will be extended in its current state; no end date has been specified.
Source found here.
Form 51 has been updated: please click here.
The Manual of Patent Practice was updated on 1 October 2010, when substantive changes were made to Sections 3, 5, 14, 17, 18, 60, 73, 76A, 89A, 89B and 123, the SPC sections, the Table of Cases and the Index. Details of the main changes made may be found here. The MPP itself may be seen here.
Formalities manual also updated
For details click here.
TM6 – Notification request for conflicting later filed mark – Renewal
It is now possible to renew the opt-in at any time by filing a new form TM6 via the IPO website – you do not have to wait for the three-year period to expire. If you wish to renew a mark, you should complete the TM6 and indicate which trade mark number(s) you would like to opt-in. You will be charged £50 for each mark. See here.
Revised forms TM16, TM17, TM21, TM33 and TM33P
Updated: 5 October 2010 according to this.
Tribunal Practice Notice (4/2010)
This TPN is so startling as well as important that it is reproduced here in full:
Opposition Proceedings –
Calculation of the opposition period
1. This practice notice is to clarify the calculation of the date by which an opposition must be filed under section 38(2) of the Trade Marks Act 1994 (as amended) and confirms the dates by which the defence and/or request to enter cooling off must be received at the Registry.
2. The Registrar has reviewed the periods normally allowed under the Trade Marks Rules 2008 (as amended) and has come to the following conclusions:
Period for filing a TM7a or TM7
3. Rule 17 of the Trade Marks Rules 2008 states -
17. (1) Any notice to the registrar of opposition to the registration, including the statement of the grounds of opposition, shall be filed on Form TM7.
(2) Unless paragraph (3) applies, the time prescribed for the purposes of section 38(2) shall be the period of two months beginning with the date on which the application was published. (Emphasis added)
(3) This paragraph applies where a request for an extension of time for the filing of Form TM7 has been made on Form TM7A, before the expiry of the period referred to in paragraph (2) and where this paragraph applies, the time prescribed for the purposes of section 38(2) in relation to any person having filed a Form TM7A (or, in the case of a company, any subsidiary or holding company of that company or any other subsidiary of that holding company) shall be the period of three months beginning with the date on which the application was published. [Emphasis added].
4. The term ‘beginning with’ requires that the publication date be included in the calculation of the opposition period (as opposed to periods starting ‘from’ where the day of the initiating event is excluded from the calculation). Explanations of the interpretation of wording in respect of time periods can be found in Trow v Ind. Coope (West Midlands) Ltd CA  2 All ER 900, at paragraph 915 and Zoan v Rouamba  2 All ER 620, at paragraph 24.
5. According to the Interpretation Act 1978 a month means a calendar month. It appears from Halsbury’s Laws of England that:
‘When the period prescribed is a calendar month running from any arbitrary date the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts: save that, if the period starts at the end of a calendar month which contains more days than the next succeeding month, the period expires at the end of the latter month.’
6. Consequently, where an opposition is made under section 38(2), or an extension is requested to the opposition period under Rule 17(3), the opponent should ensure that it is filed, at the latest, on the day immediately preceding the day corresponding to the date two months after the date of publication. For example, a trade mark advertised in the trade mark journal on 24 September 2010 would have a latest date of 23 November 2010 by which to file an opposition on a TM7 or request an extension to the opposition period on a TM7a.
7. Rule 18 of the Trade Marks Rules 2008 (as amended) states -
18. (1) The applicant shall, within the relevant period, file a Form TM8, which shall include a counter-statement.
(2) Where the applicant fails to file a Form TM8 or counter-statement within the relevant period, the application for registration, insofar as it relates to the goods and services in respect of which the opposition is directed, shall, unless the registrar otherwise directs, be treated as abandoned. (Emphasis added)
(3) Unless either paragraph (4), (5) or (6) applies, the relevant period shall begin on the notification date and end two months after that date. [Emphasis added]
8. The notification date is the date on which the notice of opposition is sent to the applicant, i.e. the date of the Registrar’s letter serving the TM7 on the applicant.
9. Although Rule 18 also uses the formulation ‘beginning with’ it sets the period for filing a defence as two months ‘after that date’, which is analogous with ‘from that date’. As a consequence the period for filing a defence on form TM8 begins on the notification date and ends two months after that date, making the period 2 months and 1 day in total. For and ends two months after that date, making the period 2 months and 1 day in total. For example, a trade mark applicant who was sent notification of an opposition on 24 September 2010 would have a latest date of 24 November 2010 by which to file a defence.
10. When a trade mark is published on a day with a number which has no equivalent in the later month because it is a shorter month, the period for filing a defence ends on the last day of the later month. For example, if a TM7 is served on 31 July 2011, the period for filing a defence will end on 30 September 2011.
11. Rule 18 of the Trade Mark Rules 2008 (as amended) also provides the periods within which a TM9c to enter the cooling-off period and a TM9e to extend the cooling-off period must be filed.
12. The relevant provisions are as follows:
18(4) … and where this paragraph applies the relevant period shall begin on the notification date and end nine months after that date. [Emphasis added].
18(5) … and where this paragraph applies the relevant period shall begin on the notification date and end eighteen months after that date. [Emphasis added].
13. In both cases the wording is comparable to that used in Rule 18(3), discussed above at paragraph 9. Therefore, the dates should be calculated as nine months (in respect of a TM9c) and eighteen months (in respect of the TM9e) after the notification date. This means that the cooling off period will end on a day which has the same number as the day in the month 9 or 18 months earlier when the Registrar sent the TM7 to the applicant or, where no such date exists because the later month has fewer days, on the last day of the later month.
Application of this practice to existing proceedings
14. As a consequence of the Registry’s revised view of the Trade Marks Rules 2008 there are a number of opposition cases currently before the Tribunal which were filed late.
15. The Registrar intends to regard any TM7A/TM7 (admitted up to and including the date of this notice), which was filed late, according to the interpretation of Rule 17, expressed in this notice, as having been the subject of an irregularity of procedure partly attributable to an error by the Office. This is due to the fact that guidance material including the Manual of Trade Marks Practice and the Opposition booklet supplied by the Registry and published on our website contain inaccurate wording in respect of the calculation of time periods for filing opposition proceedings and extensions of time for doing so. The appropriate guidance has now been updated in line with this notice.
16. The Registrar does not intend to initiate a review of the admissibility of any TM7/7A already filed. If the matter of lateness is raised by either of the parties to an opposition the Registrar proposes to use the powers in Rule 74 and 77(5) to extend any relevant time limit retrospectively, so that it expires on the date that was understood to be the final date for filing a TM7/TM7A under the previous guidance.
17. If, within 14 days of the publication of this notice, any party wishes to argue that they have been prevented from filing a new TM7/TM7A on time because of earlier inaccurate guidance from the Office, they should write to the Registry accordingly and ask for the matter to be corrected as an irregularity in procedure. The Registrar will only consider such cases where the date for filing a new TM7/TM7A has passed. Each case will be assessed on its merits.
Right to appeal
18. In accordance with Rule 70 of the Trade Marks Rules 2008, a decision to correct the above irregularity would not bring proceedings to a conclusion or result in an award of costs. Therefore, any party seeking to appeal a decision to continue with the proceedings will have to seek the Registrar’s leave to do so independently of the final decision on the opposition.
Contact for enquiries:
19. Please direct any enquiries about this notice to: Al Skilton, Deputy Head of Tribunal Section, Room 2G52, Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ, UK. Tel: +44 (0) 1633 814585; Fax: +44 (0) 1633 811175. Date published: 30 September 2010
If you do not believe me, see this!
New Copyright Tribunal chairman appointed
Intellectual Property Minister Baroness Wilcox has welcomed the appointment of Colin Birss QC as Chairman of the Copyright Tribunal, to add to his appointment as the new Patents County Court judge.
A little drum-beating about the 2010 EQE results (a brief extract):
• GB no. of candidates 231; passed 132; pass rate 57.14%.
• DE no. of candidates 888; passed 234; pass rate 26.35%.
Warm congratulations for a magnificent performance by UK candidates. But before we get carried away too far, do note that nearly four times as many German candidates as UK ones felt ready to sit the exam, and in absolute number terms 77% more German candidates will enter the list of representatives than British ones. ARE WE RECRUITING ENOUGH? Source found here.
EPO Rule changes in the offing
See panel on page 597 of the October CIPA Journal.
New President for OHIM
António Serge De Pinho Campinos, from Portugal, takes over as OHIM’s new President from 1 October. He succeeds the outgoing President, Wubbo de Boer, from the Netherlands, following his appointment by the Council of the European Union for a five-year term.
This service will be provided free of charge from 2011 as a result of DECISION No EX-10-2 OF THE PRESIDENT OF THE OFFICE of 28 September 2010.
CTM Download contains all Community trade mark data which has been entered into OHIM’s internal database EUROMARC. The service is not intended for public use, but rather for companies wishing to build their own systems making use of the data. It provides daily updates of the trade mark information in XML format.
OHIM has published two new forms designed to simplify the process of requesting a change of name or address and altering representative details on OHIM’s databases.
The new forms, ‘Requesting changes of names and addresses’ and ‘Appointing/deleting/replacing representatives’, complement the existing all-purpose ‘Recordal Application Form’, but are both simpler and easier to use.
OHIM advises the use of the new forms for the frequently requested changes indicated in their titles, while the existing all-purpose form continues to be used for other Recordals such as transfers and licences.
All forms are available in the Downloadable Forms area of the OHIM website.
WIPO launches online search tool for IP laws and treaties
WIPO has launched WIPO Lex, an online search facility for information on national intellectual property (IP) laws and treaties. It also contains related information which elaborates, analyses and interprets the laws and treaties. It currently includes the complete IP legal texts for over 60 countries, with substantial coverage for a further 100 legal systems. For countries which do not yet have their own database of laws, there is an internet platform enabling them to make available information concerning their respective IP legislation. WIPO intends to integrate WIPO Lex with WIPO GOLD, an online portal which facilitates the searching of IP information held by WIPO, which was launched in June 2010. Source found here and PLC IPIT newsletter.
WIPO Launches new Customer Service Center
On 1 October 2010, WIPO launched a new Customer Service Center as part of its efforts to improve its responsiveness to all its stakeholders – including member states, users of its global protection services and the general public, according to this.
The Center will respond to general questions on intellectual property and WIPO by telephone or e-mail, and will also serve to receive feedback and suggestions. In addition, it will help in channelling enquiries to the most appropriate specialized WIPO information service (e.g. PCT, Madrid system,
Anti-Counterfeiting Trade Agreement (ACTA)
The European Commission has published the draft text of the Anti-Counterfeiting Trade Agreement (ACTA). ACTA is currently being negotiated by Australia, Canada, the EU, Japan, Mexico, Morocco, New Zealand, the Republic of Korea, Singapore, Switzerland and the US, and is aimed at combating infringement of intellectual property rights and trade in counterfeit and pirated goods. The draft text has been jointly issued by the ACTA negotiating parties, and is intended to clarify the objectives of the proposed agreement. It highlights the main issues that may constitute the body of the eventual agreement.
See the press release here and the current draft text is here