IP UPDATE
- European Patent Office Standard Search Service Discontinued
- Comparative Advertising - An Update
- Misleading Communications to Patent, Trade Mark and Design Applicants
European Patent Office Standard Search Service Discontinued
The EPO’s Standard Search service is no longer available, having
been discontinued with effect from 1 September 2007. This
search procedure, which was to the same standard as the
novelty search of a European Patent Application, was
considered useful to, for example, strengthen a Patent
Application before filing or check the value of a possible
divisional Application before filing.
However, various national patent offices within Europe do still offer similar services. For example, the UK Intellectual Property Office (UK-IPO) does have a Search and Advisory Service that can undertake searches on patentability, validity, and freedom to operate, as well as searches to assess innovation for grant awarding bodies.
Comparative Advertising - An Update
Comparative Advertising (CA) is defined in The Misleading and Comparative Advertising Directive as “any advertising which explicitly or by implication identifies a competitor or goods and services offered by a competitor”.
CA can be an effective tool for comparing goods, service levels, prices, product characteristics etc. and companies are increasingly adopting this approach to promote their goods and services.
Subject to a few key exceptions, unauthorised use of a
Registered Trade Mark amounts to Trade Mark infringement.
However, the Directive states that a Registered Trade Mark is not
infringed by a CA statement provided that the advertisement
complies with certain conditions. Essentially, these require there
to be a like for like comparison and for differences between the
goods and services to be highlighted objectively.
The current position of the UK Courts is to view CA as a positive development which aids the consumer and hence is something to be encouraged. If you are a Company running CA campaigns this is clearly good news. Conversely, if you are trying to stop a competitor launching a CA campaign using your Trade Marks, you could be facing an uphill battle, as the Courts appear reluctant to find Trade Mark infringement when a comparison is occurring.
However, extreme care should be taken with CA as a recent Court of Appeal decision held that if a comparative statement is made, believing it to be honest, but that statement is later found to be untrue, compensation may be payable in respect of the false claims. Clearly comparative advertising is a double edged sword and an advertising tool to be used with caution.
Misleading Communications to Patent, Trade Mark and Design Applicants
We would draw your attention to the continued issue of unsolicited communications being sent directly to Applicants for European Patents, UK and Community Trade Marks and Community Registered Designs. These generally offer to register details of the Intellectual Property in a particular database for a fee. Such registration is not a legal requirement for a Patent, Trade Mark or Design.
It should be noted that these are not official communications. Correspondence from the relevant authorities will only be sent directly to an Applicant if this has been specifically requested. Otherwise, all official correspondence will be received by us as address for service and, where relevant, will be forwarded on for the Applicant’s attention.
Therefore we would advise that payment is not sent to these organisations. If you receive any such communication, we would suggest that you contact your usual Patent or Trade Mark Attorney for guidance.
