Limiting goods and services is a common tactic for overcoming challenges to an application or registered mark. However, fall-back positions should not necessarily be left to last-knockings, and there is danger in leaving them too late.
Indeed, it is clear from a recent UK-IPO appeal that restrictions offered only at the appeal stage may not be considered at all or, if considered, may be rejected without the submitting party having an opportunity to put things right. The pitfalls of not outlining alternative outcomes and putting alternative cases into pleadings are highlighted in the decision of the Appointed Person in MULTISYS (O/468/11).
On the Fence The parties to this case were involved in cross-oppositions before the UK-IPO involving the same trademark. Advanced Perimeter Systems Ltd. (“APS”) applied to register the trademark MULTISYS for perimeter fence security control systems and related software and hardware. Two months later, Keycorp Ltd. applied for the identical mark in respect of computer software, hardware, and programming services.
APS opposed Keycorp’s later application based on its earlier application for an identical mark for identical and similar goods. Keycorp countered with an opposition to APS’s application based on a claim to a right to sue for passing off. At first instance, Keycorp came off worst for the wear. It lost its opposition based on a claim to passing off rights, the hearing officer not accepting that Keycorp had proved the elements of a passing off claim as of the date on which APS had filed its application. APS’s opposition, on the contrary, succeeded based on a likelihood of confusion, leaving Keycorp facing the prospect of securing no rights at all.
Although the hearing officer had invited Keycorp to offer an alternative, restricted specification for consideration, Keycorp had not done so. Nor did it foreshadow the possibility of acceptance based on a restricted specification in its grounds of appeal to the Appointed Person, or in its skeleton argument. It waited instead to spring the point later, at the appeal hearing.
Better Late Than Never?
Counsel for APS objected to this late submission on the grounds that it had been given no opportunity to prepare for the point and, in any event, there was no specific point to consider anyway, since Keycorp still had no proposal for an alternative specification for the Appointed Person to consider.
Given the dilatory nature of the submission, it would have been open to the Appointed Person to decline the point entirely on the basis that Keycorp had failed to foreshadow the issue in good time and there appeared to be no reason to justify its delay. Indeed, as APS pointed out, no specific restriction was even ready for consideration at the time of the appeal hearing. Allowing an issue like this to be raised at such a late stage risked undermining the quick and inexpensive nature of the Appointed Person appeal route and also the principle that appeals are reviews and not re-hearings.
However, the Appointed Person was cognisant that this case involved software claims, and that software in particular was characterised by the functions it performed. It was therefore possible, at least in theory, that the average consumer would not regard Keycorp’s software as emanating from APS or from a commercially related entity if it could be described in a manner that removed the similarity of the goods. The Appointed Person thought, on balance, that APS was unlikely to be materially prejudiced by the matter being raised on appeal for the first time since the matter could be addressed on the basis of submissions without the need for evidence.
He noted, moreover, that other Appointed Persons had permitted fall-back positions to be considered on appeal. He therefore adjourned the hearing, ordered Keycorp to return with a specific and clearly unobjectionable proposal for restriction, and invited APS to make submissions on whether it would be fair to even consider such an amendment at this stage and to comment on the amendment offered.
The Final Word
In the event, Keycorp returned with the following proposed restriction in Class 42:
“Computer programming, computer advisory, consultancy and design services, computer support, rental and hire of computer software, all in relation to business, commercial mercantile and/or office administration.”
APS argued that this specification still contained services that were similar to those claimed under its earlier MULTISYS application, which claimed:
“Perimeter fence security control system comprising control hardware for monitoring and detection, control software for monitoring and detection; all for use with physical electrical fencing for land, buildings and physical premises.”
The Appointed Person dealt with the matter shortly. He had consented to consider a restricted specification if a “clearly unobjectionable” one could be put forward. While the Appointed Person was not certain he agreed with the objections raised by APS, he was of the view that the specification offered was not “clearly unobjectionable” because the wording “all in relation to business, commercial mercantile and/or office administration” was still too broad. The restriction was therefore refused, and the rejection of Keycorp’s application was affirmed.
If its restriction had been put forward at an earlier stage of the appeal or indeed before the hearing officer in the first-instance case, Keycorp might have been more successful.
It would have enjoyed the luxury of more time to flesh out its case on why the narrower specification should have overcome the conflict, because any problems with it would have been highlighted in the pleadings and skeleton arguments. The hearing officer might also have invited further amendment to the proposal at the hearing had the proposal proved problematic. Playing its cards too close to its chest therefore effectively cost Keycorp its opportunities here.
The Appointed Person in this case noted that other Appointed Persons had considered similar fall-back positions at the appellate stage, but he was critical of Keycorp’s delay in bringing its alternative position to the attention of the tribunal and APS. In the Appointed Person’s view, pleadings were intended to outline the parties’ main and alternative positions so that issues could be addressed in full at first instance. Where parties submit fall-back proposals at a very late stage in proceedings without good reason, they are likely to find the tribunal less than sympathetic.
It is noteworthy that the Appointed Person’s more generous approach would not have been followed by the General Court on an appeal from OHIM. The General Court has repeatedly affirmed the view that its role on appeal is to review OHIM’s decisions and that to accept a more limited specification at appeal stage would amount to changing the subject matter of the appeal.
Delay in advancing an alternative position before OHIM can, therefore, be even riskier. Though it squandered its opportunity, Keycorp was fortunate at least in that it was appearing before the Appointed Person on appeal from the UK-IPO and not before the far stricter more rigid General Court on appeal from OHIM. For those involved in UK-IPO proceedings, it is sensible to take the Appointed Persons’s criticism to heart.
The consideration he devoted to assessing whether he should or should not even consider, much less accept, a restricted specification advanced for the first time on appeal is an indication that the issue is a finely balanced one, and others might not secure even the chance that Keycorp had. If a fall-back position is at the back of one’s mind, it should appear in pleadings and skeleton arguments too, or run the risk of being lost altogether.