No more kitchen sinks, says Dermot Doyle -- and he's right!
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| Elsewhere it's a sink. In Ireland it's a ground of opposition ... |
"May & Baker ... opposed on a load of other totally unsubstantiated grounds. The IPKat considers this to be a stupid, unnecessary, time-wasting practice that has no right to persist in the fair land of Ireland and which does no credit to any of us in the twenty-first century. As Tim Cleary [the Hearing Officer in that opposition] said:At the time, this Kat asked a number of Irish trade mark practitioners why they kept on raising of grounds of opposition just for the sake of doing so and the answer he received was more or less a friendly reassurance that "that's just the way we do it in Ireland"."Notwithstanding the fact that the Opponent did not formally abandon the other grounds of opposition, namely those under Sections 6(1), 8(1)(b), 8(3)(b), 8(4)(a), 10(1), 10(3), 10(4)(b), 37(2) and 42(2) of the Act, I am satisfied that there is no need for me to give them any serious consideration [that's NINE grounds of opposition, raised for no good reason]. Because those grounds have not been supported by relevant evidence or argument, a prima facie case has not been made out under any of the relevant Sections of the Act and there is no onus on the Applicant to respond. Nor do I consider it necessary for me to do more than to state that I dismiss the opposition under each of those Sections as unsubstantiated".
Eight years later, this cost-generating and pernicious practice is still rife and, if anything, it appears to be on the increase. The words in the passage quoted below are not those of the IPKat, nor even of Merpel. They are the words of Dermot Doyle, acting for the Controller, in his 9 May 2013 ruling in T.M.R. Restaurants Ltd's application; opposition by Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers (you can read the case in full here, though the IPKat will be posting a note on the substantive decision in this futile, dead loss of an opposition in the near future). For the record, this was a opposition by the owners of the Monte Carlo casino, among other things, to an application to register a figurative mark containing the words "Monte Carlo" for a fish and chip shop in County Monaghan, Ireland. Anyway, said Dermot Doyle:
"30. Having dealt with all the absolute grounds of opposition I must take this opportunity to express my concern about the all-too-common practice [i.e. a practice that has persisted in Ireland even as other countries strive to simplify, streamline and generally tighten up their IP dispute resolution procedures] that has become part of what I regard as the “kitchen-sink” approach to oppositions, whereby opponents cite a multitude of sections of the legislation as grounds of opposition, including those that the opponent knows cannot succeed, though which requires applicants to undergo unnecessary work and expense to address. Typically no evidence is adduced or arguments advanced to substantiate these grounds of opposition. For example, over the years, all oppositions before me that are based on Section 8(4)(a) have been dismissed because opponents have always failed to identify the actual law that expressly prohibits the mark under attack. Other examples include the frequent citing of Sections 37(2) and 42(3) regarding the use of or the intention to use the mark, and the failure to satisfy the Controller that the requirements for registration have been met, respectively; neither of which can ever succeed in its own right. The charge of “bad faith” appears regularly without being properly particularised or supported by evidence. I raise these points by way of encouraging opponents and, in particular, their legal representatives, to refrain from adopting the “kitchen-sink” approach, so that the cost and time taken to bring opposition proceedings to a conclusion are minimised. Failure to do so may lead to the necessity to take into account the approach adopted by opponents when ultimately assessing the award of costs, irrespective of which party is successful [says Merpel, this sounds like a version of the pay-to-waste policies favoured by green economists over the years]".For the record, the opponent in this case raised eleven grounds of opposition, some of which did not even exist as grounds of opposition under the Irish Trade Marks Act 1996.
This Kat proposes to keep his eye on the raising of pointless, unsubstantiated grounds of opposition and to expose this pathetic practice to the public glare whenever possible. He is also offering, by way of inducement, katpats to those IP practitioners who raise only grounds of opposition that they seek genuinely to substantiate, even if it turns out that those grounds are not ultimately successful.
