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News
23 September 2009
The James Nurton interview with Shane Smyth, Managing Partner
Alicante News - European Trade Marks and Designs Newsletter - Issue 09/09
James Nurton is a specialist intellectual property journalist from the UK and is currently the managing editor of the leading global magazine for IP owners, Managing Intellectual Property. In this month's interview James Nurton talks to Shane Smyth of FRKelly in Dublin about the challenges of clearing trade marks, changes at the Irish Patent Office and the Lewis Gaze Memorial Scholarship.
How did you get into trade mark work?
I came in through the back door - through the science route. I was qualified as a solicitor and also had a degree in computer science but once I started working I quickly realised I was better suited to trade marks than to patents.
Why was that?
It's more marketing-oriented, more hands-on and less obscure. You can see the direct results of the work in everyday life. I still do some patent work on the legal side, but most of my work now is trade marks.
What kind of work do you do?
Although I'm a solicitor, we are not a firm of solicitors. So we handle prosecution of patents and trade marks and litigate up to, but not including, the courts. We handle a lot of work in oppositions and cancellations.
I primarily do OHIM work now. We have a large clerical staff so I handle mainly oppositions, revocations and invalidity work, as well as analysing searches and advising clients on strategy.
What sort of clients do you have?
We are the largest firm in Ireland so we do a lot of work for national clients but we also have a strong US client base, maybe thanks to the Irish connection. For example, we do European trade mark work for Motorola. We have about 75 people, split roughly equally between patents and trade marks. Historically the firm has always had a strong trade mark team, with people who are known internationally. One of my former partners was Martin Tierney, who was ECTA president. We file about 400 to 500 CTM applications each year.
What was the first CTM you filed?
I believe it was number 7245 for Levelite, for a US client.
What do you think of the CTM system?
The system works very well in general although it does have its hiccups - like any system. For example, one of the problems is with inter partes proceedings, where there are often delays. But the staff are obliging and deal with queries expeditiously and professionally.
The big challenge for trade mark owners is that it is increasingly difficult to clear trade marks. Being able to register in three classes for the same price encourages people to file for goods or services that they don't necessarily need, and allowing broad use of class headings also creates situations where you have a feeling that the activities are not really in conflict, even if they are based on the specification of registration per se. In these cases, you have to rely on the owner of the earlier trade mark to take a pragmatic approach.
The US takes the opposite approach with much narrower specifications and the need to show a genuine intention to use the mark.
The other problem that compounds this is that you can have a CTM registration which you are only using in, say, Galway , and that will protect your trade mark from a challenge for non-use. That situation does need to be clarified. However, personally I think it should remain the case that use in one part of one country is sufficient.
What do you think needs to be changed?
The pressing issue is to discourage people from using class headings and broad specifications. Maybe we need to have a separate fee for each class and an additional fee for large specifications? Another issue is that five years is a long time in which to commence use. That period could be reduced to three years.
The approach from OHIM, however, seems to be that trade marks should be like designs - cheap and easy to register. And if there is a problem then parties should fight it out in the courts. The difficulty with that is that, in Ireland for example, litigation is extremely expensive. We have seen small clients who are advised that they have a strong case but have nevertheless shied away from court. Of course, inevitably OHIM staff don't have experience on the ground where people are searching and clearing a trade mark.
How do things compare in Ireland?
The Irish Patent Office is user-friendly and there are a lot of self-filed applications now. The Office will walk through the application process and in about 70% of cases everything is fine; in the rest, they will go to a trade mark attorney.
I think national offices will always have a future but they will increasingly be focused on local individuals and industry. Even if you are just looking at the Irish and UK market, you would probably still go for a CTM.
The Irish Office is under pressure to become more like other offices in Europe, such as OHIM and the UK. For example, they are considering doing away with refusal of applications on relative grounds. That would reduce the examiners' workload considerably but on balance the profession is likely to resist it. We think it is good to have at least one barrier before the opposition, as it leads to a cleaner system. Otherwise, people not unnaturally ask: how can it happen that the same mark can be registered for the same goods or services? I believe that not having relative-grounds refusal puts too much onus on individuals and small companies who may not be able to afford to defend their trade marks.
Another thing being discussed in Ireland is to do away with the registration fee, as OHIM has.
Have you seen much impact from the economic downturn?
Patent work is still buoyant but trade mark work is down, noticeably trade mark searching. People are consolidating what they have, so there is less searching for new brands, and they are looking at their existing portfolios for new products. Ireland is in a particularly bad position because the economy was heavily based on the construction industry.
As a member of the MARQUES Education Team, you are involved in the Lewis Gaze Memorial Scholarship. What is that exactly?
The Award was established in 1997 in memory of the first chairman and president of MARQUES, Lewis Gaze of Rolls-Royce, who died at a young age.
When we know where the Annual Conference will be held, the Education Team work with a MARQUES member locally to encourage undergraduate students from the local university to submit a dissertation of at least 10,000 words on a chosen topic. Three prizes are awarded, and the winner gets to go to the following year's Annual Conference.
This year, we had a very strong entry and Jeremy Phillips in the UK helped to judge the prize. The winner, announced last week, was Colm Maguire of the University of Edinburgh, who wrote on "Distilling dilution". We are really looking for well-researched and well-articulated papers.
Unfortunately, we haven't really kept in touch with the previous winners. They are generally very good law students, so I expect they have gone into commercial firms, but not necessarily into IP work.
What has been the biggest change in your career?
The biggest change is it's more difficult being on the other side of the fence: someone who is seeking to adopt a new trade mark and needs advice on availability. We now have multiple registration systems and the cost of clearing a mark just in the EU is extremely prohibitive. You could easily spend €30,000 and then find the mark is not available in one country, and have to start again. That means search strategies are very important.
It's a great profession. It is evolving very quickly, and the work is becoming more complicated and interesting. It is a lively area of the law and very hands-on, and you get to travel and meet lots of people. I would recommend the trade mark profession.
In the past, you could sit back and simply file applications but the work is far more advisory now. So most of the associates we hire now are solicitors or barristers - people with a law degree - whereas in the past we would hire people with a general degree. You also need to drag in other areas of law, such as competition, contract and labelling, so you at least need to know where to look for answers to those questions. But hiring is not a problem: there is a lot of talent out there.
