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The James Nurton Interview

This month James Nurton talks to Louise Gellman of Nabarro LLP about trade mark harmonisation, company names and the Madrid System

When did you start working in trade marks?
I have been in the same firm all my career. I spent six months in IP as part of my training and found it very interesting. I'm still working for some of the same clients now! I had previously had a summer job as a temporary secretary at the BBC and had learnt a little bit about copyright and libel, which had sparked my interest.

I like the fact that trade marks involve lots of law and affect different sectors. I have clients in a range of industries, from finance to food, hotels to cosmetics. I am also involved with various trade mark organisations – I am chair of INTA's Madrid System Subcommittee and a member of the MARQUES Geographical Indications Team. Being involved in groups like these helps you to see the bigger international picture, as well as to maintain professional relationships and make new contacts.

What kind of work do you do?
Nabarro is a full service law firm and in our IP practice we do everything apart from patent filing. I lead the trade mark prosecution side, which includes cancellation and opposition work. Working on these contentious matters and helping clients devise an overall strategy is the most interesting part of the work. We see a lot of fascinating disputes played out at opposition level since these days clients are wary of full-blown trade mark litigation.

As well as working on UK, Community and international trade marks, and managing international portfolios, we also handle work relating to domain names and company names, as well as patent litigation and IP transactional matters.

How big is your team?
The group has about 16 people, including those dealing with prosecution. We are all solicitors apart from four trade mark managers. Our integrated practice enables us to remain close to our clients and get involved in strategy. We have a large US client base, who find it normal to source prosecution and legal work from one firm. We think it is more effective for clients. It is also good for our staff to be able to work with a client on trade mark strategy, filing, policing and enforcement.

What do you think of the CTM?
It has definitely been successful. I think the broader harmonisation project has been very interesting – nearly 20 years on we are still battling to know the answers to some basic questions. The Directive and Regulation were a compromise between diverse legal systems, and it has taken a long time and lots of experience to address fundamental questions about use and infringement, for example. Cultural differences also make it interesting. When dealing with oppositions, we encounter a wide spectrum of attitudes and approaches, depending on the countries involved.

What particular issues need to be clarified?
We are all looking out for the ONEL case on genuine use. I think the Benelux office decision that use in one member state cannot constitute genuine use is wrong and I hope the Court of Justice will say genuine use is not about one member state but involves a wider test. It's quite important: for example, we have overseas clients who launch their products in the UK, but take some time to launch in the rest of Europe. Also, I don't think a geographical test was intended by the legislators.

Another interesting issue is class headings. There is a UK case involving the mark IP TRANSLATOR, which has attracted a lot of attention. From a practical point of view, how you interpret class specifications is very important and there are varying practices in different offices.

What do you think of OHIM?
I welcome developments like e-filing (although it took time to settle down) and it will be great when we can deal with recordals electronically too. Proceedings such as oppositions still feel slow compared to other aspects of the system, but I think the consistency of decisions is improving.

In the early days, we saw problems where we had conflicting decisions on registrability/distinctiveness over the same mark. Things have become more predictable now.

I think the price reductions have been good for users. I'm pleased to see the great strides there have been in making the filing process more efficient and it is good to see continued investment going into cancellations and oppositions. Appeals still feel like they take a long time so I hope that will be improved.

What was the first trade mark you worked on?
Early on I remember working on trade mark applications for Costco, a major US and UK operator of membership retail warehouses. When filing its application for its house brand COSTCO and private label mark KIRKLAND SIGNATURE, we pushed the boundaries on retail services specifications at the UK office and at OHIM. I still act for Costco.

What's the most interesting case you have had?
I had an interesting opposition involving the trade mark ONE, which our client applied for in relation to condoms and similar goods. There was an opposition from a telecoms provider, which had an identical trade mark but for non-similar goods – so there was no confusion but a question of tarnishment. But OHIM agreed with us that use of ONE on condoms was not detrimental to the reputation of the other mark.

How does the UK office compare to OHIM?
The UK is particularly efficient and OHIM is becoming better. While the role of national offices is changing due to globalisation, there is often still a reason to have a UK mark. For example, if I know there might be conflicts when applying for a CTM, it's a good fallback. Also, if the UK is an important market, it can be very useful in litigation to have a UK mark. Also, unlike a CTM a UK registration acts as an automatic defence to infringement claims. So tactically it can be useful.

The UK office has been consulting on CTM opt-ins, many of which are due to be renewed in October, so we are waiting to see if they are going to maintain the existing system. Due to software changes at the UK office, it looks like opt-ins won't continue. This will make having a commercial watching service more important.

What do you think of the UK Company Names Tribunal?
We've been very active since the dispute mechanism was set up a couple of years ago, and it has been very useful. It helps brand owners tackle opportunistic company name registrations early on and its structure is similar to domain name dispute resolution mechanisms. It is a useful tool in policing your brand in the UK and we have recommended it to clients, with some success.

What do you think of the Madrid System?
We always consider Madrid, but we would rarely base a Madrid application on a CTM because of the risks of an attack on the CTM. Instead, we would consider basing the Madrid mark on a national filing and designating the CTM.

At the moment there is a big debate over the Norway proposal, which was recently discussed at the Working Group at WIPO and would remove the need for a basic mark. That would, in theory, simplify the system for users but might lead to a new “central attack” mechanism. The change would be huge, and transform WIPO's role. I think the debate will take several years and we won't see a consensus or decision for some time.

Are there other issues that you're following?
I was interested to hear discussion about the possibility of allowing non-EU applicants to obtain CTMs directly, without a representative, if there are no deficiencies. If this were to happen, I expect some practitioners will feel threatened but I don't think they should. The interesting work will still be there as clients will still need strategic advice and will need to be represented in oppositions and other complex work.

We are also watching the Max Planck Institute study with interest. That will undoubtedly lead to changes in trade marks in Europe.

What will be the big challenges in the future?
People trade differently now and business has become more global – but there are still local issues. We are seeing more business done electronically but trade mark practitioners have to be able to adapt. The way people interact and how they perceive brands involve more cross-jurisdictional issues, but there is plenty of law and tools to deal with them.

For example, we have seen with the recent Adwords decisions, while there's still some debate about what constitutes infringement, the Court of Justice has taken a practical view taking into account the business models now in place. Ten years ago, before businesses and consumers had come across internet advertising, the Court might have reached a different conclusion. But it shows the law can evolve and makes these issues very interesting to work on.