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The Trade Marks and Designs Registration Office of the European Union
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This month, James Nurton speaks to Gillian Deas, a partner of D Young & Co in London who is also the current president of the Institute of Trade Mark Attorneys (ITMA). She looks back on the development of the CTM system, discusses the new IP Regulatory Board in the UK and explains why trade mark attorneys need to adapt to compete in the future.
How did you start working in trade marks?
I've been working in trade marks since 1967. I started working in the HR department of Shell International Petroleum Limited at the age of 18 after finishing my A-levels. But I was already leaning towards working in the law and a position as a trade mark assistant came up. So I came into the career by accident. I remained in Shell for 18 years, before I moved to Bahrain for a career break for about 10 years.
While at Shell, I studied to become a trade mark attorney and then I qualified. I handled trade mark prosecution, working on everything from searching consumer product trade marks to clearing agricultural marks. I also had geographic responsibility for French-speaking areas and the Americas.
When I returned from my career break, I went to work for BAT, standing in for a trade mark manager, and then in 1997 I moved into private practice. I now have a wide diversity of clients covering everything from chemicals to class 46. Having spent nearly 20 years in-house, I still identify very strongly with clients.
What has been the biggest change during your career?
The advent of the CTM and the accession of the UK to the Madrid Protocol took place as I was about to come back into the profession. These developments changed the way of protecting your trade marks in Europe , and have had a huge impact. Originally the Madrid Protocol didn't have such a huge impact but nowadays it is definitely something you have to take into account, as the system has expanded.
They have been very interesting changes and mean it is no longer a question of getting national protection but rather developing a strategy.
How big is your team?
We have about 20 people working in trade marks, though not all of them are qualified. We do everything from filing and pre-clearance to advising on infringement actions. There are about 180 to 200 people in the firm as a whole. I'm not sure exactly how many CTMs we file, but it would be several hundred a year across the team.
What do you think of the CTM?
Above all, it is excellent value for clients. It is a very good way of being able to litigate across the European Union – you can get pan-European injunctions.
I've been very impressed with the communication from OHIM, which has improved hugely, and the increased efficiency. I think that has been largely thanks to the current President and Vice-President and I hope it continues when the new team is appointed later this year. The departmental heads have also been encouraged to be more communicative and open.
The Office has also speeded up, which we welcome, and issuing registration certificates online will help enormously. The downside is that the decision-making process can take a long time and leave you in limbo. I believe a team of lawyers has been brought in temporarily and have worked well to reduce the backlog, so I hope that is something that is built on.
Do you think the delays are too long in opposition and cancellation actions?
In general yes, but sometimes delays are effective. I think the cooling-off period is necessary: sometimes it does take that long to reach agreement. And the evidential rounds do take time: I wouldn't be in favour of reducing these rounds. I think we have the minimum that you need now.
Dealing with the backlog comes down to resources and staff training. For example, the new database giving comparisons of goods and services must be helping.
What about the Community design?
Both the unregistered and the registered Community design have been a good thing. The unregistered design helps industries like fashion where designs are seasonal, and the RCD is a very useful tool, which enables you to protect get-up, which was never registrable in the past – at least in the UK where passing-off was the only route.
RCDs can also be helpful for 3D marks, where OHIM's approach to trade marks can in some ways be a bit strict. If OHIM decides the mark doesn't qualify as a CTM, you might be able to protect it for 25 years as a design, after which it would have the acquired distinctiveness necessary to be registered as a trade mark.
What is the most unusual mark you have worked on?
I have worked on a number of colour marks, which have not got through examination. The problem is that the amount of evidence you need is so huge.
How does the office in the UK compare with OHIM?
They have made many changes, some of which have been more useful than others. For example, the introduction of fast-track registration was a bit of a waste of time. Similarly, the Right Start initiative has not been that useful to practitioners or clients, but it has been useful for private applicants.
But the upside is that the Office is very speedy and approachable, especially at the junior examiner level. Examiners used to be like gods and you couldn't approach them but there has been a great improvement since the office moved to Newport in Wales.
The communication at a higher level has been very good, though it is sometimes one-sided: at ITMA we don't feel they always take on board submissions we make, and sometimes there are concerns that we're involved in the process when the decisions have already been made.
Tell me more about your role with ITMA.
It's a very demanding role, and takes up about 50% of my time. In fact, during my term we took on board a CEO. I liaise with bodies such as the UKIPO, WIPO, OHIM, INTA, ECTA and many others. I have represented the Institute overseas, particularly in raising the profile in the Far East and entertaining representatives of our sister organisations in Japan and China.
We have also been working closely with the Solicitors Regulation Authority and Ministry of Justice in setting up the new regulatory boards. Up until January 1, ITMA had two roles – representational and regulatory – but that has now changed.
There are about 800 registered trade mark attorneys in the UK and ITMA has about 1600 members in total. Another recent change is that the office is moving back from Croydon to London, which will make it more accessible.
What does the launch of the IP Regulation Board mean?
Trade mark and patent attorneys have been recognised as lawyers in the courts under the Legal Services Act 2007. This is good for the profession. We are perhaps the only trade mark attorneys in Europe regulated by an independent body, the IP Regulation Board. There is a set code of conduct and people can complain to this body if they need to. In practice complaints are few and far between but consumer groups are pleased with this extra protection. However, most trade mark attorneys actually work for big clients who speak with their feet!
A subcommittee of the IP Regulation Board will go over the qualification system and continuing professional development, and set down minimum standards. This will be very effective in training and qualifying for trade mark attorneys. The big issue is that we are reforming our educational system, so it will be more like that for solicitors: attorneys will have to work as a trainee under an attorney for two years and keep a log book, which will be checked.
What is the biggest challenge for trade mark attorneys?
I think the aim must be to get all trade mark attorneys qualified as litigators. We are working on getting litigators' rights for our members: from later this year we'll be able to split the rights so members can do one course or both. It is a great advantage that we can carry out the role of solicitors and advocates in the County Court.
The biggest challenge trade mark attorneys face is competition from traditional law firms so we have to adapt in the face of that.
Not all of us yet see the value of qualifying but I think it will be essential. There are a lot of private applicants in the UK now – accounting for about 40% or 50% of all applications – but they don't all realise how complex trade marks can be. By taking on more litigation work, we can cut the costs for clients who would otherwise have to go to traditional law firms. This is very important for anyone in the profession who is not now approaching retirement.