I just read an interesting assessment of forthcoming changes in European trade mark law. Rather enthusiastically, it was called “Trademarks: a Hot New Issue“. I imagine only an IP lawyer could describe changes to trade mark legislation as “hot”, but it was worth a read.
The piece, published on the website of the Law Society Gazette last week, focussed on the proposal to cut the fees for Community Trade Mark applications. OHIM, the body responsible for administering the system, has been making a sizeable profit despite having cut its fees substantially a few years ago. The European Commission, it seems, is not happy about this.
It is generally agreed that Community Trade Mark application fees are too high. One of the reasons for this is that the basic price for an application gives you the right to cite goods and services in three classes. If you want to know more about how the classification system works, see my explanation here. I’m guessing from Mr Goldsmith’s piece above referenced that there are a number of European countries in which this is the standard practice – not being a trade mark attorney this is not something that I have ever needed to know. However, in the UK it has only ever (so far as I’m aware) been necessary to pay for your application in one class.
The result of this is that although it costs a base price of €900 to file an application for a Community Trade Mark (otherwise referred to as a “CTM”), in the UK it costs just £170. (By the way, there’s no VAT on either.) On the other hand, for your €900, you get not just an extra two classes of goods or services in your specification, but you get trade mark protection across the whole of the European Union, which I believe now extends to 30 countries, following the accession of Croatia, and about 300 million people.
This creates a number of problems. First, the CTM application is unnecessarily complicated and expensive for SMEs who wish to file applications in just one or two classes (which is most of my clients). Secondly, it makes the comparison between a UK and a CTM application difficult to explain to a client who is open to the latter but a little short of funds (again, most of my clients). Third, those clients that do opt for a CTM but who are only really interested in one or two classes feel the need to cite all the three that they have been forced to pay for, filling the surplus classes with an unwanted clutter of goods and services that really they have little intention of using.
Excessive specification clutter (yes, that’s the phrase they use) then causes a problem for businesses who bother to check the trade mark registers before selecting a new brand. If you’ve never heard of a trade mark or its proprietor and the mark itself is yet to be used in public, how do you know that really the owner intends to apply it only to clothing in class 25 and not for industrial oils and greases in class 4 or non-metallic building materials in class 19?
As you can see, this debate, whilst superficially dull, is actually quite relevant to brand owners and would-be brand owners around the world. Especially those, like you, who are on a restricted budget.
So why is this an example of the frustration that lawyers create?
If you scroll to the bottom of Mr Goldsmith’s well-written article, you will see that he asks for comments from his colleagues. However, of the four comments posted, only one partially contributes to the debate. The other three and a half comment upon or castigate the author for his apparent use of the American spelling “trademark” as opposed to the English version “trade mark”. (In truth, I suspect that the spelling was changed in the sub-editing process.)
One of those comments includes the line:
“If we can’t get these things right, what hope is there for the clients?”
All around us, the profession is crumbling. We face hitherto unknown financial pressures and competitive threats. Lawyers have never been less valued by their clients or more disrespected by the public at large. But of course what prospective clients are really interested in is whether we can spell the word “trade marks”.
If you’ve ever thought the lawyer you regretted consulting sat in an ivory tower unable actually to give you any useful advice, here’s your proof. Were I not an aetheist, I think I would be seeking divine intervention by now…