Trade Mark Advice Centre - Alexander Ramage Associates - Trademarks UK, Trademarks protection, Trademarks costs

				\| home \| privacy \| terms of use \| old site \|

Alexander Ramage Associates Trade Mark Attorneys


	Lectures given by Eric Ramage & Maggie Ramage

Lectures by Eric Ramage
-	Lecture to ITMA (March 2010)
-	Working with dots (March 2008)
-	Revocations and Restrictions (Sept. 2006)
-	Internet Issues (July 2006)
-	Overlap between trade marks and design rights (April 2005)

Lectures by Maggie Ramage
-	Lecture tour China/Japan (Oct. 2008)
-	Lecture to INTA Berlin (May 2008)
-	China and Japan Lecture (October 2006)

~ Page 1 of 1 ~
Lecture to INTA Berlin
(May 2008)

"Fraud at the USPTO and the perspective of a non-US Practioner.
A comparison between the US system and the European/UK Practice
and advice to applicants."

Lecture given by
Maggie Ramage
to
The International Trade Mark Association
Berlin, May 2008

As a non-US practitioner, this is my perspective on how the US system relating to ensuring the accuracy of information submitted to the USPTO differs from European and UK practice. I also set out my thoughts on whether there is any equivalent to the US concept of “fraud on the USPTO” in OHIM or the UK IPO concerning trade mark matters, and attempt to answer the question “are false statements made to OHIM and the UK IPO to be considered fraudulent?”

It is difficult to run a straight comparison between the systems in the US, the UK and OHIM. Under UK practice, we do not recognise the concept of inaccurate information being fraudulent. We do have the position of bad faith being recognised, but bad faith is not the same as fraud.

Having said that, the Oxford Companion to Law does say that “bad faith” is the term for the state of mind of a person who acts dishonestly, and without legal justification for his action. Therefore, we could say that dishonest intention equals bad faith.

However, at common law fraud is limited to actual deceit or a wilful act, something which is knowingly done. This implies a mens rea, or a deliberate intent to defraud or mislead – a much stronger action than simply bad faith. Fraud is not likely to be shown if it can be proved there was a reasonable and honest belief that the statement concerned was true. Although I think bad faith will exist if there is a deliberate intention to mislead, as I have said, in the UK fraud is a criminal act. Therefore the test of what constitutes fraud in the UK is quite different to the test for bad faith.

In the United Kingdom (and I think OHIM) a list of goods that has not been drafted with precision might leave the registration vulnerable, but cannot be said to be fraudulent. Neither do I think that that goods inadvertently included in the specification or an incorrect statement innocently made proof of bad faith, and therefore can such really be regarded as fraud?

If a proprietor states that a mark is in use on some item, an attorney acting for them is not thought dishonest by relying or acting on that statement. Equally, if a proprietor informs an advisor as to the scope of his use and intended use, and is advised by them to claim what proves to be an unjustifiably broad specification of goods or services, to what extent should the client’s conduct be criticised? I would say probably not. Although a proprietor who has been advised that his specification is too wide for the use he could show, but who decided to “chance his arm” might be criticised, such action could not be said to constitute fraud on either OHIM or UK IPO.

In OHIM there is no requirement to show any intent-to-use a mark at the date of application. An applicant can file whether he intends to use the mark or not. This leaves an applicant able to file a mark and then expand into use at a later stage. Once the mark is registered, if genuine use is made within five years, the validity may not be challenged in revocation proceedings based upon non-use. If no such use is made, then the registration could be vulnerable to an attack on the grounds of non-use. It follows that the fact that there is no intent-to-use cannot constitute bad faith, even though the mark may have been registered in respect of more goods or services than the applicant intended to use the mark for. Therefore, a lack of intent-to-use is not a subset of bad faith.

In the United Kingdom the applicant or its agent is required to sign a statement on the application form that there is an intention to use the mark applied for on all of the goods, and wilfully signing such a false statement might constitute bad faith; but it is the wilful wrong statement that constitutes bad faith, not the lack of intention to use.

Indeed, OHIM encourages the use of class headings in drawing up specifications, regarding them as covering all goods or services in the particular class. As there is some uncertainty whether some Courts would accept this, many applicants now err on the side of caution and use a belt and braces approach by claiming a class heading plus a narrower and more specific sub category to ensure that all goods and services of interest are actually covered.

In the TRILLIUM case (note to MAR – get reference), the first cancellation division considered whether a Community trade mark could be declared invalid on the grounds that it was applied for in bad faith. It was alleged that bad faith resided in a very broad specification covering computer software and communications hardware. However, the proprietor did not use and had no intention to use on anything other than telecom switching software.

There was no evidence that TRILLIUM had acted dishonestly or with bad faith or was involved in unfair practices, and no evidence of dishonesty was shown.

The application for a Declaration of Invalidity was dismissed, although the point was made that a bad faith attack may have some, albeit limited, role to play in controlling over broad specifications.

The burden of proof for criminal acts in the UK is at a far higher level than for civil misdemeanours. The test for criminal acts is “beyond reasonable doubt”, opposed to “balance of convenience”. Probably the closest equivalent that the UK has to the US doctrine of fraud on the USPTO is our practice on intent to use, and allegations of bad faith, and in my view both of these grounds are quite different from fraud on the US Patent Office.

As I said earlier, In the United Kingdom the applicant or its agent is required to sign a statement on the application form that there is an intention to use the mark applied for on all of the goods, and wilfully signing such a false statement might constitute bad faith.

We do not provide a Statement of Use in the UK equivalent to that filed in the USPTO.

The Application Form to file a trade mark application, a TM3A, carries the statement:

“The trade mark is being used by the applicant, or with his or her consent, in relation to the goods or services shown, or there is a bona fide intention that it will be used in this way”.

(Section 32)(3) Trade Marks Act 1994)

There is no requirement to swear under oath or declare use under penalty of perjury on our Application Form. The signatory is not warned that wilful false statements and the like so made are punishable by fine or imprisonment, or both, as is the case in the USA. Indeed the signatory is usually the applicant’s attorney, not the applicant.

We do not need to submit samples of the mark as used, just a depiction of the mark on the Application Form. Incidentally neither does the proprietor need to provide proof of use of the mark upon renewal.

Trade mark applications are frequently filed on the basis of an intent-to-use the mark, but anything included in the specification upon which the mark in question is not subsequently used, does not invalidate the application itself.

If the application matures to registration and is challenged by a third party later, on the basis of non-use, the registration may remain in force, but only for the goods where use may be shown. If use cannot be shown on certain goods or services, then those goods or services are simply cancelled leaving the remainder of the application or registration to continue with the other goods or services. There is not, therefore, the equivalent notion that the applicant knew he was deliberately defrauding the UKIPO at the outset at the date of application.

I have already said that there is no need to submit samples of the mark as used, just a depiction of the mark on the Application Form. We provide no proof of use of the mark upon renewal.

There are no national checks carried out by UKIPO on non-use of marks on goods or services. This point only becomes relevant in a third party challenge, for example a cancellation action on the basis of non-use, after the first five years of the life of a mark, or a continuous five year period. Even then, there may be a legitimate reason for non-use on certain goods or services, but this is still not seen as fraud on the Patent Office.

In the UK, we do not need to provide a Declaration of Use. Therefore, unless challenged, the goods and services claimed at the date of application stand in that application, whether used or not. This is not necessarily thought to be an example of bad faith if use could not be shown, and certainly is not thought as a fraudulent act.

Some marks may only proceed in the UK upon acquired distinctiveness, for example if a mark is thought to be descriptive. If evidence of use of the mark for goods or services is claimed, this may be by way of a Statutory Declaration or Witness Statement, which includes a statement of truth. I do not know what would happen if a declared statement was shown to be totally untrue. The question of bad faith must certainly arise, making such a false statement is perjury, and anyone damaged by it might raise the question of fraud, but I do not think that is an issue that our UK IPO would regard themselves as competent to consider in view of the criminal implications.

In the UK, we tend to file broad specifications. In OHIM, there is currently discussion ongoing to encourage applicants to streamline specifications by claiming complete class headings. Contrast this with the US practice where specifications are only allowed if precisely defined. Goods and services may be described, but are narrowly defined with, often, the qualification “namely ...” with a description of every last named item following.

I was involved in an example by way of comparison of a US registration which had been filed on the basis of use. The first use claimed anywhere was 1995, use in commerce was claimed from 1996 and the application was actually filed in 1997. This was for a fairly broad specification which included a range of items including a specified product. After the Declaration was signed and submitted, it was found that there was actually no use on that specified product. This was a genuine mistake at the time, and in fact the client subsequently did sell the specified product, but had not done so at the date of signing the Declaration. Plans were in place to use the mark on these goods, but use came after the Declaration was signed. We refiled for safety. This was the house mark and we could not take the chance that we were vulnerable to have the whole house mark disappear through an allegation of fraud upon the US Patent Office over one single item in the specification.

There are a number of problems, in my view, over overly broad specifications in OHIM and the UK:


1.	How will it become possible to clear marks for availability by searching as this will become more and more impossible for an attorney to advise.
2.	Class heading claims, in my view, allow an unfair “buffer zone” for the applicants, irrespective of use of those goods or services, if they are not challenged by a third party.
3.	An important point is that overly broad specifications may attract more, quite likely unnecessary, challenges such as oppositions and cancellation actions, which are expensive and could be avoided.
4.	It has been said that it is a commercial nonsense to claim too broad – this goes against public policy. It would be very rare indeed for an owner to sustain an entire class heading claim with proof of use.
5.	Indeed Lord Justice Jacob has noted:
	“Over broad specifications cause OHIM and the national Registries “massive unnecessary work” in considering whether the mark applied for is descriptive of any of the categories of goods or services.”

Very broad terminology in a specification may ensure that a case brought against an infringer falls within the “identical mark/identical goods” criterion, thereby obviating the need to establish likelihood of confusion. Therefore, a case brought in an entirely different commercial field, where no real damage or confusion was perhaps practically likely, may succeed where otherwise it would have failed.

In comparing broad specifications from Europe under OHIM and the UK, and also the practice in the USA, I do question, as a UK and CTM practitioner, sometimes whether the US takes things a little too far. Having already expounded on the fact that overly broad specifications are not a good thing, look at, e.g., the case of Class 16. In OHIM and in the UK it is possible to claim printed publications or printed matter at large. This would cover any kind of form that matter took. However, in the USA it appears to be necessary to list every last item which could constitute printed publication or printed matter, for example, brochures, pamphlets, booklets, circulars, inserts, flyers, bills etc. I wonder if it would be possible to end up arguing over whether a pamphlet was a leaflet and vice versa when looking at questions of use in the US. Which system is actually better in practice?

In the DECON case (note to MAR – obtain reference) Lord Justice Pumphrey (as he now is) stated:

“There is no pressing need, therefore, to confer on the proprietor a wider protection than his use warrants by unduly broadening the specification of goods. There is a balance to be held between the proprietor, other traders and the public having regard to use which has in fact taken place.”

Some tips for practitioners


1.	When filing in the UK and in OHIM, look carefully at the wording of the specifications claimed. However, remember that there is no bad faith angle or fraud in claiming goods or services, and in OHIM there is no requirement for an intent-to-use at all. Consider future intent-to-use and note in particular that overly broad specifications may attract more contentious issues, leading to uncertainty of your own protection and possibly unnecessary expense.
2.	Try not to overly stretch specifications unless there is a genuine intention that the applicant may move into those areas. Be as accurate as possible and try to avoid “template specifications” which may bear little resemblance to the mark at issue. These may attract otherwise avoidable oppositions.
3.	When filing in the USA, treat the specification with absolute caution. Check the actual use of the mark before signing any Declaration of Use, and note this is for each item. By missing one item, it could be possible to jeopardise the whole registration at a later stage due to an allegation of fraud on the US Patent Office.
4.	Take great care when lodging a Section 8 – 15 Affidavit – check all the goods again to ensure that they are in fact in use.
5.	Take care in providing samples of use of the mark. Is the mark shown as actually used? Has the mark changed in use and no longer reflects the application or registration, which is often the case as marks evolve and are updated over the years. Check the sample of use against the registered mark.

6.	Is the mark in use on all the goods and services claimed?
7.	Check the first use date claimed at the outset and ensure that this is correct. Upon initial application, is the mark actually in use already or should it be based on a future intent-to-use the mark?
8.	Always keep good records to show use of marks as it can be invaluable at a later stage to be able to rely on these. Things such as customer orders and invoices really can save the day.
9.	Be diligent: remember that use on one item in a specification does not denote use on all items in a specification.

If any discrepancy is spotted soon enough, for example there could be problems over declared goods in use or a mark has actually changed, there may be time to simply refile for safety.

Protect your rights and do not allow an oversight on how the mark is shown, claims of use date or in particular claims of use on items in a specification to jeopardise your entire US registration on the basis of fraud. If this related to your clients house mark this could be catastrophic.

Maggie Ramage
Alexander Ramage Associates
maggie@ramage.co.uk

	Alexander Ramage Associates, Griffin House, West Street, Woking, Surrey, England, GU21 6BS Tel: 01483 750701 - Fax: 01483 740560 - Email: ARA@ramage.co.uk