Modernisation of trade mark law in the USA
The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.
Caterpillar Inc (“the Opponent”), one of the world’s largest manufacturers of mining and construction equipment, has been successful in its opposition to the registration of HYPERCAT as a UK trade mark at the UK Intellectual Property Office (“UKIPO”).
Hypercat Alliance Limited (“the Applicant”) originally filed a UK trade mark application for HYPER/CAT, in combination with a stylised image of a cat’s head in class 9 for software and sensors.
After becoming aware of the application, Caterpillar Inc sent the applicant a pre-opposition letter requesting withdrawal of the application. The Opponent considered that the element /CAT in the applied for mark would cause confusion or association with several of their registered CAT marks but set out in detail what marks it would permit the Applicant to register and use, including HYPERCAT as one word without any undue emphasis on the word CAT and only in combination with the stylised image of a cat’s head and that certain goods such as sensors be deleted from Class 9.
The Applicant signed undertakings and withdrew their application, and then filed a new application for HYPERCAT solely as a word mark without the stylised image of a cat’s head and covering inter alia sensors in Class 9.
An opposition was duly filed with the Opponent alleging, amongst other grounds, that the application was filed in bad faith because of the Applicant’s failure to abide by the undertakings it had entered into which constituted conduct falling below standards of acceptable commercial behaviour.
The Applicant put forward a number of arguments. They stated that they only signed the undertakings because they felt intimidated by the Opponent’s letter, were fearful of the consequences of not doing so and lacked funds to obtain specialist legal advice. The Applicant stated that if they had obtained legal advice, they would have refused to sign the undertakings because the Opponent overstated its position, the letter constituted an unjustified threat under section 21(1) of the Act and in view of the Opponent’s alleged bullying tactics. Moreover, the Director who signed the undertaking on the Applicant’s behalf felt they had been given the Opponent’s consent to file an application to register HYPERCAT as a word mark without any additional device element. In any case, the Director was outside the UK and the undertakings were not brought to the attention of the person filing the Application.
The UKIPO Hearing Officer (HO) dismissed the Applicant’s arguments, holding that the letter did not contain unjustified threats under section 21(1) of the Act since it made no reference to potential infringement proceedings. The HO found that the Opponent’s letter did not overstate their position but was simply a conventional statement of their position. Moreover, while the Opponent did request certain undertakings, the letter struck the HO as being fairly conciliatory in nature and there was nothing to suggest that the Applicant was being bullied into accepting the undertakings. Regarding the Applicant’s failure to obtain legal advice on the Opponent’s letter and undertakings, the HO’s view is that this did not detract from the fact that the Applicant signed the undertakings willingly. Regarding the Applicant’s allegation that the Opponent misled the Applicant regarding what elements of their mark would be acceptable, the HO found that a careful reading of the relevant clause was not misleading but actually quite clear.
To the Director’s statement that the Applicant was unaware of the undertakings, given his absence in Australia, and so was not involved in the decision to file the mark, the HO stated that any new Directors or decision-makers should have been made aware of the undertakings and in any case it appeared that others had been involved in the Applicant’s decision to sign the undertakings.
The HO also noted that the new trade mark application filed also covered goods and services in classes other than Class 9. The HO decided that these additional classes would fall within the scope of the undertakings signed by the Applicant since there was no limitation regarding the scope of goods or services in the undertakings.
Finally, the HO stated that it is up to the party seeking to avoid an agreement to put forward a specific case as to why the agreement should be regarded as unenforceable, but that the Applicant had failed to do so.
Taking this all into account, the HO found that the filing of the new application by Hypercat Alliance Limited was an act of bad faith and that the registration should therefore be refused in its entirety.
Caterpillar also put forward other grounds of opposition to the application, including likelihood of confusion, taking unfair advantage/dilution/damage to repute and passing off but the HO did not consider it proportionate to consider these since the opposition had already succeeded on the grounds of bad faith.
The growing trend of self-filing trade mark applications may well attract pre-opposition letters of the kind received by the Applicant in this case. In these circumstances it is highly advisable to obtain legal advice regarding the options available and in particular whether or not to enter into undertakings (and the implications of breaching undertakings). Sometimes reaching a commercial agreement may be the better option, although professional advisors can help assess the strength of a potential Opponent’s position and thus if it is worthwhile contesting an opposition.
If you have received a pre-opposition letter and are unsure what to do next, please get in touch to speak to one of our attorneys.