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China & Japan
Outline text of a talk
by Maggie Ramage
in Japan and China
to The Professional Institutes for Patent Attorneys & Trade Mark Attorneys
during a lecture tour in October 2008
In this talk I propose to deal with “when, and why” might we need to file evidence and “what” are we likely to need to file by way of evidence.
First, when and why might we need to file evidence?
This may be
- during prosecution of trade mark applications,
- in opposition proceedings,
- in proceedings for revocation on non use,
- in invalidity proceedings,
- and in litigation.
What kind of evidence we are likely to file will depend on why are filing the evidence and of course what we are seeking to prove.
For avoidance of doubt, I would like to stress that, unlike some other jurisdictions, such as the United States or Canada, it is not necessary to prove that a United Kingdom Trade Mark has been brought into use before registration is granted. The question of use before registration arises only when a trade mark has been objected to on “absolute grounds for refusal” under Section 3 (1) (b) or Section 3 (1) (c) or Section 3 (1) (d) of the Trade Marks Act 1994, on the grounds respectively that the trade mark is devoid of distinctive character, that the trade mark consists exclusively of a sign or indication that may serve in trade to designate a particular characteristic of the goods or services, or that the trade mark consists exclusively of a sign or indication that has become customary in the current language, or in the bona fide and established practices of the trade. If an objection is taken on those grounds, then the Applicant can ask for the trade mark to be considered for registration on the basis that it has become distinctive in relation to the goods or services in consequence of the use that has been made of it prior to the date of Application for registration.
What evidence do we file at this point? Evidence that points to the sign having actually acquired the distinctive character needed to qualify for registration. Usually, this takes the form of:
Evidence to show that the (1) goods for which registration is sought (2) have been sold (3) throughout the United Kingdom (4) under the trade mark concerned, (5) for a period of at least 3 years (6) before the date of application.
The evidence may be in the form of a Witness Statement or a sworn declaration made by the applicant or a senior officer of the applicant company, and will identify:
(1)
the precise goods sold
(2)
the areas of the United Kingdom in which sales have been made
(3)
the labelling applied to the goods (to show the trade mark)
(4)
the date the sales started
(5)
the nature of any advertising or promotional work to support the sales
The statement should also provide sufficient sales figures and advertising figures to enable the Examiner to draw a reasonable conclusion as to the precise extent of the sales and the likely level of the exposure of the trade mark to the public.
Sales of only one bag of sweets each year for 4 years is not likely to establish that a descriptive trade mark had acquired sufficient reputation to qualify for registration. Sales of millions of bags over a one year period supported by substantial advertising might persuade the examiner that the same trade mark had quickly become recognised as denoting the applicant’s goods.
In opposition proceedings there are at least two types of evidence we may need to file.
When opposition is based on a registration that is more than 5 years old at the date the opposed application was published,the opponent must show what use was made of the registered trade mark during the 5 years. Any goods for which use cannot be shown will be ignored for the purpose of the opposition.
