ITMA suggests new "Lite" trade mark registration

“For many small and medium sized enterprises (SMEs) or industries such as fashion which deal in brands that have a short “shelf-life” the cost and time needed to deal with registrability issues can be a strong disincentive to seeking registered protection”, said Philip Harris, President of ITMA. “The needs of such consumers are very different to those of large corporate clients or those with interests in long-term brands.”

“Introducing a form of “lite” registration, might offer SMEs a cost-effective form of protection. One possible model might be for there to be less emphasis on pre-grant examination and more on the “invalidity” process, coupled with a short, fixed non-renewable term and very limited infringement rights. We would not wish to compromise the integrity of the basic registration system in the UK, which we recognise and champion as the best in the world, but an alternative scheme of this kind would offer flexibility to different types of consumer and an opportunity for the system to be more user-friendly.”

“Enforcement costs are another factor,” said Mr. Harris “Much of the cost appears to stem from the unnecessary complexity of court procedures and length. There is no reason in principle why the vast majority of registered trade mark infringement cases cannot be dealt with in the same way as an opposition or invalidation action in the Trade Marks Registry – such cases rarely last for more than a morning. We believe that robust case management coupled with the greater use of the new rights of representation recently granted to qualified members of ITMA will have a positive effect in reducing costs’

“Greater use of mediation in disputes would also be helpful and ITMA wholeheartedly supports the recent initiative by the UK Patent Office to increase mediation and the use of ADR (Alternative Dispute Resolution) to resolve litigation.”

Mr. Harris suggested that IP and its relevance and benefit to business is not well publicised in the UK and that media coverage is often erroneous. “ITMA itself seeks to address this issue and we support the measures that the Patent Office takes to promote IP”, he said. “However, we feel that the government could do more to raise awareness of the issues.”

A full copy of the Institute’s evidence is available on the website www.itma.org.uk. In particular it includes comments on the benefits of the UK system of examining applications against earlier registered trade marks and the concerns about adopting the European system whereby the onus, and cost, is on the owners of those rights. The Institute also calls for the introduction of an element of criminal intent for criminal offences connected with the misuse of trade marks;

NOTES FOR EDITORS
1. The Institute of Trade Mark Attorneys (ITMA) was established in 1934 as the professional body representing those persons qualified to act for the owners of trade mark and allied intellectual property rights (in particular, registered designs) both nationally and internationally. It now represents the vast majority of UK registered trade mark agents and all UK Trade Mark & Design Litigators.

2. Currently ITMA has approximately 500 practising members; it also extends associate membership to professionals in related fields of law and overseas membership to foreign trade mark attorneys. Its total membership (all classes) is about 1600 members, primarily located in the United Kingdom and Europe, but also in more than 50 other countries.

3. ITMA is regularly consulted by UK government and by international bodies when questions affecting trade mark and allied intellectual property rights arise. It has regular meetings with the UK Patent Office, the Community Trade Marks Office (OHIM), the World Intellectual Property Organisation (WIPO) and other sister organisations in Europe and beyond.

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