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FEATURE
The minimum requirements for a
letter of consent are set out below:
(i) The consent should always include
the details of the person giving the
consent, ie name, position, the name
of the company (if appropriate) and
the letter should be signed by the
person named.
(ii) The application in respect of which
consent is being given should be
identified. The application number(s)
is sufficient. It is not essential to
include the trade mark – nor is it
necessary to identify the earlier trade
marks owned by the person giving
consent.
(iii) If the specification is not referred
to it will be assumed that the
specification applied for is acceptable
to the party giving the consent.
However, if a specification is referred
to, and is narrower than the one filed,
the application will only be accepted
without a requirement to notify the
earlier right holder in respect of the
goods and services in conflict to
which the consent applies.
(iv) Letters of consent should be in
English or, if in a foreign language,
be accompanied by a certified
translation.
56.2.2 Consent between Companies
in the Same Ownership
The Registrar accepts the following
simplified procedure in such cases,
should the parties wish to pursue
this option:
(i) A general letter of consent
may be provided between the
two companies setting out the
relationship between the two
companies and confirming that they
are prepared to consent to any trade
mark applications made by the
other party.
(ii) On each occasion that a copy of
the general letter of consent is filed,
the applicant, or his agent, must
supply a covering letter certifying
that the general consent is still valid.
56.2.3 Payment for Consent
If there is a conflict, the actions of
the proprietor of the earlier mark in
requesting payment for consent is
not a factor of which the Registrar
can take account.
FEATURE
57 Honest concurrent use -
examination of evidence under
Section 7
Section 7 of the Act begins:
“7. – (1) This section applies where on
an application for the registration of a
trade mark it appears to the registrar
(a) that there is an earlier trade mark
in relation to which the conditions set
out in section 5(1), (2) or (3) obtain, or
(b) that there is an earlier right in
relation to which the condition set
out in section 5(4) is satisfied, but the
applicant shows to the satisfaction of
the registrar that there has been
honest concurrent use of the trade
mark for which registration is sought.
(2) In that case the registrar shall not
refuse the application by reason of
the earlier trade mark or other earlier
right unless objection on that ground
is raised in opposition proceedings by
the proprietor of that earlier trade
mark or other earlier right.”
However, Section 7(5) of the Act goes
on to say:
“(5) This section does not apply when
there is an order in force under
Section 8 below”.
An order has now been passed which
means that Honest Concurrent Use
can no longer be filed in support of
an application where there is a
requirement to notify the owners
of earlier marks thought to be
confusable with the applicant’s mark.
Applicants may wish to place on file
evidence of their earlier use of the
mark applied for. If so, the application
will not be held up in order for them
to do so. It is anticipated that any
evidence is more likely to be filed in
response to any opposition the
applicant may face after publication.
58 Dividing the mark (TM12) as a
method of overcoming a requirement
to notify
This does not, strictly speaking,
overcome the requirement for the
Registrar to notify the holders of
the earlier mark, but where the
goods/services which conflict can be
pinpointed, these can be the subject
of a division. This places them in
a separate application to that
of the remaining non-conflicting
goods/services and allows the latter
application to proceed without a
notification requirement if the
Registrar is satisfied that the restricted
goods/services included in that part
of the division has overcome the
conflict. The part which includes the
goods/services which conflict must
then be dealt with by one of the
other means suggested here.
59 Unacceptable methods of
overcoming notification
requirements
The following are NOT acceptable
methods of overcoming notification
requirements which are open to the
applicant. Furthermore, they should
not be suggested by the Registrar as
he is unaware of the commercial
circumstances surrounding the use
(or otherwise) of the earlier mark:
seeking revocation of the earlier
mark : TM26 (N) –non use or
TM26(O)
other grounds
seeking invalidation of the earlier
mark: TM26 (I),
seeking assignment of the earlier
mark or assigning the application to
the proprietor of the earlier mark:
(TM16),
seeking full or partial surrender of
the registered earlier mark: (TM22 or
TM23).
If the applicant decides to try one
of these methods, any request to
suspend the application pending the
outcome of the action should be
refused and the case allowed to
proceed to publication with
Notification being sent to the
earlier right holder. If exceptional
circumstances are made known to
the examiner, such as that both
parties have requested the
application be suspended, the
request should be referred to the
Team Leader for consideration. If
acceptable, the application may be
suspended to allow the action to
be completed within a reasonable
timescale. Notification would no
longer be necessary in such a case.
In practice, it is expected that such
actions are more likely to be pursued
in response to an opposition being
filed against the later application after
publication. Allowing the later mark
to proceed to publication would
place both parties on an equal
footing.
18 ITMA Review November 2007