IP Review Summer 2018

London: 4 More London Riverside London SE1 2AU United Kingdom Tel: +44 20 7940 3600 Fax: +44 20 7378 9680 Bristol: 1 Redcliff Street Bristol BS1 6NP United Kingdom Tel: +44 117 925 3030 Fax: +44 117 925 3530 Leamington Spa: Nicholas Wilson House Dormer Place Leamington Spa Warwickshire CV32 5AE United Kingdom Tel: +44 1926 310700 Fax: +44 1926 335519 Sheffield: Derwent House 150 Arundel Gate Sheffield S1 2FN United Kingdom Tel: +44 114 273 3400 Fax: +44 114 275 5788 Munich: Steinerstr. 15 A 81369 Munich Germany Tel: +49 89 50222 4020 Contact Us The spectre of patent trolls has been around since the late 1990s. However, whilst this trolling behaviour is most well-known for patents, it can also affect companies and their trade marks. One example of this is Michael Gleissner, a German-born entrepreneur, who is thought to own over 1,000 UK company names which have been listed as the applicant on thousands of trade mark applications filed all over the world. In particular, Gleissner has successfully registered popular English forenames, such as ELIZABETH, JOHN and PETER. Subsequently, Gleissner has sought to ‘block’ trade mark applications that include these names by filing oppositions and seeking a cost award in his favour. The UK Intellectual Property Office (UKIPO) has become wise to this sort of behaviour and, for example, has refused to register the name ALEXANDER for Gleissner as a trade mark. It was found to be in ‘bad faith’ as the absence of any sound business reason to use the mark amounted to an abuse of the legal system. Further, the UKIPO has also dismissed actions by Gleissner to cancel other companies’ trade marks on the basis of non-use, again as these actions were in bad faith. The UKIPO’s tough stance is good news for brand owners as it is helping to prevent abuse of the UK trade mark system. However, it seems that it is still possible for third parties to attack brands for financial gain, especially as no equivalent approach has been taken by the EU Intellectual Property Office. For example, Michael Gleissner filed eight non-use revocation actions against several British Airways trade marks, including B.A. and CONCORDE. One of British Airways’ marks was completely cancelled and six of the marks were partially cancelled, meaning Gleissner’s action against British Airways was successful. Further, in this kind of situation, a tactic that has been used by trolls is to subsequently file trade mark applications corresponding to the revoked marks to arguably ‘steal’ a registered mark by re-filing it as their own. It is worrying for brand owners that a third party can file non-use revocations and sit back while the burden of proof falls on the brand owner to compile evidence to demonstrate use of the mark in question. It is rare to see such actions but there are still third parties who possess the financial means to bully trade mark owners for material gain. Overall, putting a stop to trolling behaviour is difficult. However, there may be steps that brand owners can take to mitigate against such threats: • If you find yourself on the receiving end of a non-use action, we recommend re-filing your trade mark for the goods and/or services under attack. • Furthermore, we would also advise trade mark, domain name and company name watches so that the registration of any blocking trade marks can be identified and potentially challenged. Trade Marks The rise of the trade mark troll To find out more contact Pollyanna Savva psavva@withersrogers.com 16