Should we all be just a little more American?

Here's the Editorial of the April 2013 issue of JIPLP, the full contents of which you can peruse here. This is a guest piece by Paul Stevens, an intellectual property partner in Olswang LLP, who writes:

"One enduring advantage, and indeed pleasure, of being an intellectual property law practitioner is the international remit which we enjoy outside our own jurisdiction. Conventions between states ensuring reciprocity give rise to a common language for practitioners and familiarity with internationally recognised concepts readily understood and explained to clients. The cross-fertilisation of jurisprudential heritages from different territories provides a rich learning environment for self-improvement and best practice. The work of organizations such as the World Trade Organization and the World Intellectual Property Organization has led to increasing harmonisation, as well as reciprocity of protection.

And yet there remain significant differences: differences borne of both national laws and legal practitioners' background.

In the area of trade mark law, we see differences around the world at the margins of protection. At its core, trade mark law still protects the trader from origin confusion arising from third party goods or services. However, one area where both law and practice see a huge divergence is the approach taken at the point of filing. And this is where I wonder whether we in Europe should perhaps be just that little bit more American.

Maybe we're not -- but is there any
harm in being a bit more American? 

Before the US Patent and Trademark Office (USPTO), applicants must, prior to registration, demonstrate that they have actually used the trade mark in commerce for the goods or services sought, or have an intention to use the mark for those goods and services. An intention to use must be “bona fide” and must be something more than just an idea or an aspiration. That intention to use is crystallised on the application form by a statement that, if inaccurate, gives rise to the possible penalty of perjury. Such a sworn statement is not of itself sufficient either. Applicants should generally be able to produce contemporaneous objective documentary evidence demonstrating that at the time of the application they had a bona fide intent to use the mark in the US for each of the goods and services applied for. That documentary evidence may include business plans, product designs, samples, or correspondence with prospective licensees. A failure to produce such evidence may result in a refusal or invalidity of the mark. Misstatements made before the USPTO have resulted in trade mark registrations being rendered invalid where the applicant signing the declaration has shown a “reckless disregard for the truth”.

With these penalties comprising her legal landscape, unsurprisingly a US attorney is highly circumspect when drafting and filing specifications for applicants. The prospect of her client being accused of “fraud before the USPTO” makes for a prudent advisor when looking at the breadth of specifications.

In contrast, at OHIM a Community trade mark can only be declared invalid “where the applicant was acting in bad faith when she filed the application for a trade mark”. There is no requirement that there be an intention to use the mark applied for, and evidence of no intent to use is not a ground for establishing bad faith per se. OHIM's practice of allowing specifications to encompass all goods or services in a class by use of class headings (both before and after the CJEU's decision in IP Translator) tacitly endorses specifications with extravagant breadth. Applicants and their advisors have little incentive to narrow their specification to goods or services which are really of interest. Indeed, the structure encourages advisors to draft broadly, just in case.

Why is this a problem? Any practitioner who has sought to clear a trade mark in more than one territory is faced with an impossible task of steering a client through registrations which may, on their face, have little to do with the commercial interests of the registrants. Advisors can't distinguish between real and paper conflicts. Businesses that regularly clear trade marks become frustrated because of the white noise of large numbers of ‘paper-only’ clashes. Unnecessary registry proceedings arise where there is no real conflict but where overly broad specifications overlap.

Ultimately commerce is hindered by a cluttered register. As the European community grows, the potential for more imagined conflict increases. With that in mind, wouldn't we Europeans benefit from being just a little more American?".