I attended a presentation by David Morgan of the Patent Office at the Leeds Hilton yesterday as part of the consultation on relative grounds of refusal. Having attended the very popular roadshow on software implemented inventions last year (which would have affected only a small number of people and in the event came to nothing) I expected an even bigger turnout as this proposal almost certainly will come to something and will affect thousands of SME in the North of England.
I couldn't have been more wrong. There were 8 of us in the meeting room. That was, however, one more than they were able to muster for Birmingham on 20 April. The presentation did not add much to the materials on the Patent Office website. Mr Morgan outlined the present practice where the Patent Office does consider relative grounds and the OHIM practice which does not and set out the options. These are all on the consultation page of the Patent Office website. These are essentially variations on keeping the present practice or adopting the EC practice. Two possible refinements to the present practice for dealing with what the Patent Office calls the non-use issue brings and one possible variation from the EC practice brings the total up to 5.
One thing that was pointed out to me yesterday was that a change of the system will probably abolish honest concurrent user in the abvsence of primary legislation to reinstate it. S.7 (3) of the Trade Marks Act 1994 defines "honest concurrent use" as "such use in the United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the Trade Marks Act 1938." However, that sub-section is subject to s.7 (5) which provides that s.7 does not apply where there is an order in force under s.8. The significance of that provision is that s.8 (1) confers power on the Secretary of State to make an order to provide that a trade mark shall not be refused registration on a ground mentioned in s.5 (relative grounds for refusal) unless objection on that ground is raised in opposition proceedings by the proprietor of the earlier trade mark or other earlier right.
I have forgotten the legislative history of the bill and cannot for the moment recall why we preserved the concept of honest concurrent user in the first place and why we tied its survival to secondary legislation under s.8 but I am sure it is all in Christopher Morcom's book which I shall try to find time to look at when next in chambers.