Customer feedback - April - June 2011

Compilation of formal complaints made by our customers during the period of April - June 2011. The complaint received is listed in the first column. Read across the row to find out our response and any additional measures taken.
Formal complaints Response and additional measures taken
You were unhappy as we were not able to provide you with a copy of an unpublished Patent application as you were not the applicant or the address for service. You were also unhappy with the correspondence subsequent to this. We had already corresponded with you regarding the reason why we could not provide you with a copy of an unpublished application. We responded now informing you of the procedure how to object to the ownership of the Patent application in question and how you could submit observations once the Patent is published.
You told us, "You were unhappy about the way the tribunal section and the hearing officer conducting your hearing for invalidity. You claimed there has been a breach in your convention rights and have decided to seek remedies for the alleged breach." We said, "I understand that you have previously asked the Trade Marks Tribunal to look into your concerns that you believe that there has been a breach of your human rights. I further understand that the Tribunal Operations Manager, looked into your concerns and that he was unable to identify any decisions or actions taken by any member of the Tribunal which would be seen as being contrary to the provisions of the HRA 1998.I acknowledge that you are still very concerned about the way in which these proceedings are being conducted, which is why I want to take this opportunity to reassure you that your human rights in respect of your intellectual property, together with your right to a fair hearing, are guaranteed by the IPO's procedures. These established procedures of the Tribunal will provide you with an opportunity to submit your arguments to a Hearing Officer, who will have had no previous contact with your case, and before any decision is taken which may be adverse to you. In addition, any decision taken by one of the Registrar's Hearing Officers is subject to appeal, and you have the statutory right to appeal the Registrar’s decisions to one of two independent review tribunals, the Appointed Person or the High Court as appropriate.
In this instance, the Hearing Officer has rejected your request for leave to appeal certain procedural and case management decisions before the Tribunal makes its substantive decision in these proceedings. The Trade Marks Act and Rules provide the Hearing Officer with the power to do so. However, I must stress that this only affects the timing of any appeal and not your right to make an appeal. In the event that the substantive decision is adverse to you, and you continue to believe that it was materially affected by either wrong or unfair procedural or case management decisions taken at an earlier stage, you will be entitled to appeal those decisions as appropriate. The grounds of any appeal may include your assertion that the Tribunal Section and the Hearing Officer have, during the course of these proceedings, acted in a manner which you believe to be contrary to the provisions of the HRA 1998."
You were unhappy with a further delay of your examination report on your application and enquired if the new target deadline would be met. We responded apologising to the delay in issuing your examination report. We explained that due to a large back log of examination work we were unable to meet the proposed deadline. We will ensure that the new deadline of 26 September 2011 will be met. We also explained the procedures for accelerating the examination process.
You were unhappy that you had money taken from you by EIEC in regards to your European Trade Mark you thought you had filed. We said that we would like to reassure you that the Intellectual Property Office takes the issue of unsolicited mail sent to our customers extremely seriously and we are doing all we can to address it. We are vigorously pursuing the concerns raised by customers in relation to unsolicited mail with the department’s lawyers, Trading Standards Institute and Companies Investigation Branch within the Insolvency Service. Further, we have raised the issue with OHIM and other national offices. In addition, we will continue to issue the warnings to our customers that they may receive unsolicited mail and are making progress in our work to be able to identify and deter third parties who use automated systems to extract data from our website. We have also recently increased the prominence of our website warning which you will now find at the centre of the Trade Marks home page.
You were unhappy about the examiners edited version of your abstract. We advised you that it is standard practice for examiners to edit the abstract. There is a word limit which we must comply with for publication purposes. Our examiners routinely have to reduce the abstracts down to the key features.
You we generally unhappy about the service the IPO provides. You also were unhappy about the objections we raised regarding your Patent applications. We responded that we have forwarded your letter to the hearing officer who will be responsible for the hearing on your application. Any outstanding issues will be addressed during the substantive examination assuming that you request this. We informed you that we do have a back log of examinations, but explained the procedure to request accelerated examination. We also wanted to clarify that the IPO had insisted that you must use a Patent Attorney. Unlike some other offices the IPO does not require applications to be made via Patent Attorneys. We do encourage applicants to engage professional help, whether from Patent Attorneys or other qualified sources, but this is not a requirement.
You told us, "We have recently been in contact with your offices regarding a recent Trade Mark that has been registered. Our concern is that it has been published and now registered without any notification to ourselves, on the grounds that we hold the following Trade Mark. It would appear that the later mark is near identical to our previously registered mark, and the services covered are near identical. We would therefore be grateful if you could please confirm why we were not notified of the application, as we would have objected at the time of publication. We would also be grateful if you could please now confirm any solution to this matter. Thank you very much for your anticipated assistance in this matter." We told you, "Thank you for your email dated 27 April 2011 in which you express your concerns about the registration of a Trade Mark. I should first explain that as well as being the Office’s Chief Executive, I also hold the statutory post of Registrar of Trade Marks and I write this letter in both capacities. As a result, I am not in a position to comment on the particular merits of this case, but I think that it might be helpful if I briefly outline the procedure which the law requires us to follow. The role of the Trade Marks Registry is to process Trade Mark applications and to place onto the register those Trade Marks which have successfully completed the examination, opposition and registration process. Once a Trade Mark application has been submitted, an examiner will decide if there is an objection to the application. This examination process will determine whether the Trade Mark is distinctive for the goods and/or services applied for; whether it is deceptive; or whether it is contrary to public policy or to the accepted principles of morality. The examination will also involve a search of the register to identify any identical or similar Trade Marks, for identical or similar goods and/or services that have already been applied for, or registered. I should explain that when considering the similarity of Trade Marks, examiners take into account all of the relevant case law but such considerations are, by their very nature, subjective. In this instance the examiner took the view that the visual differences between the two Trade Marks, referred to in your email, were such that it was not appropriate for a letter of notification to be issued to the earlier rights holder. Therefore, in the absence of any other substantive objections, the Trade Mark application was accepted and published in the Trade Marks Journal. As no formal opposition was filed, the Trade Mark was registered. Although we apply a rigorous Trade Mark examination process, it is inevitable that with thousands of applications each year, parties sometimes consider marks have been accepted and registered incorrectly. If someone believes that the Trade Mark should not have been registered then they can apply to have it removed from the register. This is known in legal terms as Invalidated. Through this process, any party that can prove a Trade Mark should not be allowed to remain in force can have it removed from the register. An application may be made at any time after the Trade Mark has been registered, and can request the removal of the entire registration, or only some of the goods and services covered. The Registrar's role in invalidation proceedings is that of a tribunal, and it must therefore ensure that proceedings are dealt with in a manner which is fair to all parties. Both the applicant and the registered proprietor are allowed set periods of time in which to submit arguments and evidence in support, or to oppose, an application. At the conclusion of invalidation proceedings, the hearing officer will decide whether to agree to, or to reject, the application, and whether or not the registered Trade Mark (or part of it) should be invalidated. The decision can be appealed to an independent judicial authority known as the Appointed Person, or to the High Court. If you launch an application for invalidation and are ultimately successful, then the fee you initially pay (which at £200 is the same amount required to oppose a Trade Mark application) is recoverable as part of an award of costs which will be made in your favour. The costs awarded by the Trade Marks Registry are made as a contribution to the overall expenses incurred, and are not intended to recover actual costs. Any award of costs will take into account all the circumstances of the case, and the Trade Marks Registry is guided by a 'scale of costs' which can be viewed on our web site . Please be aware that should you be unsuccessful with your invalidity application, then it will be open to the other party to make a request for an award of costs to be made against you. Further information on how to apply for invalidation is also available from our website. It may be advisable to seek professional legal advice before proceeding, and I would suggest that you contact either, the Institute of Trade Mark Attorneys External Link, the Chartered Institute of Patent Attorneys External Link, or the Law Society External Link. I trust that this has helped to clarify the matter for you. I hope you will understand that as a Tribunal, the Registrar of Trade Marks must ensure that all proceedings are dealt with in an impartial way and without prejudice at all times. You will therefore appreciate that as you may be involved in future proceedings before the Trade Marks Tribunal, no further comment can be made on the merits of your case. If you wish to discuss any procedural issues, my colleague Raoul Colombo, Tribunal Section Operations Manager, will be happy to assist. He can be contacted on 01633 811407."
You told us, "The purpose of this is to convince yourself that the examiner is not suitable to deal with the technology for my Patent." We told you, "Thank you for your letter dated 28 April 2011 to our previous Chief Executive, whom I succeeded as CEO and Comptroller General of IPO last year, and your comments regarding the processing of your application which I note has now been granted, and your concerns over the processing of your new application. I am sorry that you remain disappointed with the way we handled your now granted Patent application. I can confirm that your new application is currently being processed under our Green Channel acceleration provisions (as you requested in your letter dated 22 March 2011) and that you will shortly be in receipt of your search results (as you have queried in your letter dated 30 March 2011). Regarding the processing of your new application, I note your wish not to have it examined by a particular examiner. The Deputy Director responsible for processing Patent applications in the relevant area of technology has allocated the examiner for the case. That allocation has taken into account of a number of factors, including relevant technical expertise, to balance work priorities within the team of highly skilled examiners to ensure that all Patent applications are processed in a timely manner. We have quality management systems to ensure that applications are handled to a consistently high standard, and I would expect all our examiners to carry out their responsibilities in an objective way. As you know, if ultimately there is a difference of view between you and the examiner, you have the right to have the matter considered afresh by a more senior officer. I do hope this is helpful."
You told us, "That you had logged a caveat. You had received notification that the application was refused on 18 January 2011. It has come to your attention that the mark has now been published on 21 February 2011. Having spoken to the office we understand that such refusal was in error and the application was reinstated. We have not been notified regarding any of this and the window for objection is now closed." We said, "Thank you for your recent correspondence. I am pleased to now be in a position to fully reply. I am sorry that you were not made aware of the advertisement in the Trade Marks Journal and for any inconvenience this has caused. The shortcoming came about as the limited functionality of the paper filed caveat system only picked up the 'refusal' status and was not able to then track the subsequent partial reinstatement and advertisement. The wording of our paper filed caveat form will be reviewed to see if it needs improvement. For future reference, you may wish to consider filing an electronic caveat because this system is devised to notify of any changes to the mark and is an on-going service. It is also free to use. Details of this process can be found on our website under the online services section. As detailed in your letter, the period for officially opposing the application has expired. As the time limits for opposition are set in legislation, they cannot be re-opened retrospectively. The delayed status of the application has therefore been removed and the status is showing as registered. Registered marks can be challenged under the invalidation proceedings, so there is still opportunity for your client to object should they have grounds to do so. The process and costs of these proceedings are very similar to opposing a Trade Mark. Although I have read your comments with regards the grounds on which you may consider objecting to the registration, we cannot of course pass comment on the detail as we must remain impartial pending any formal proceedings, which I am sure you appreciate. I apologise for any inconvenience caused as a result of the unusual circumstances here, but trust that my reply sets out the options clearly."
You sent further letters outlining your unhappiness with how your application had been handled. We explained that all the documents were with the Hearing Officer and apologised for any inconvenience or distress caused. We reiterated that we would continue to give as much assistance through the process as possible. We also advised that the best course of action would be to await the outcome of the hearing within the next two months.
You told us, "You were unhappy with the service provided by the renewal team in respects of fees and failure to renew my Patents on time." We told you, "I fully accept that we misinformed you of the renewal fees due in our letter of 26 April 2011. We did send you another letter dated 5 May 2011 apologising for our error. We agreed to waive the shortfall of £20. This fee has been waived exceptionally and without prejudice as a gesture of goodwill on our behalf. Having reviewed your complaint and how it has been handled by the Office, I can see that we have failed to provide the high level of service expected of us and to which we aspire. I am therefore prepared, exceptionally and without prejudice, to waive the £40 shortfall and to renew the 2 Patents immediately. Once again I apologise for the inconvenience caused and I hope that I have resolved this matter to your satisfaction."
You told us, "You were very unhappy with the advice you were given by an examiner in the private applicants department. you were confused by the advice and felt the advice you received was deceptive and unprofessional. We said, "We apologised that you felt the examiners conduct was deceptive and unprofessional. We considered your complaint and reviewed all correspondence between you and the examiner. It seems that the advice you were given was correct and do not accept that the examiners conduct has been deceptive or unprofessional."
You requested further details regarding the registration of your Trade Mark by a third party. We replied, "Thank you for your letter dated 7 June 2011 in response to my letter to you of 1 June 2011. Our official records for your application have been checked and the Hearing Officer in that case, assures me that all the documentation you wanted him to see was on file at the date of the Hearing but he did tell you at the Hearing that he had not had the chance to read it all in detail prior to that Hearing. However, he also assured me that all relevant evidence relating to the substantive issues to be decided for the Patent application will be taken into consideration in his decision, which I understand will be issued very shortly. I note your second application is awaiting publication. Your Trade Mark query.
Regarding your Trade Mark query, we have checked our official records and we do not have any record of an application from you to register a Trade Mark for the word and/or logo at this Office. You are correct in saying in your previous letter of 14 April 2011 that a Trade Mark for the word was registered in the name of ************. However there did not appear to be a similar previously registered mark when this was registered in October 1998. It is not normal practice to search our Patent records or to check court proceedings in the course of our Trade Mark examination process. Any Trade Mark which is to be registered is advertised for opposition purposes prior to registration and if no opposition is received, the Trade Mark is then registered. If you feel you have grounds to dispute this registration, you may pursue the matter under invalidation proceedings. Further information can be found on our website under the section headed "Objecting, challenging and monitoring Trade Marks". Alternatively, if you ring we can talk you through the procedure. You should note however we cannot give you specific advice on how to formulate your case as we must remain impartial in case of any subsequent challenge from any other party involved. Other matters in your letter. Whilst, of course, I would not pretend to be an expert in your chosen profession, I can assure you that the examiners dealing with your applications are experts in the technology of those applications. As such, they apply that technical expertise in conjunction with the requirements of Patent law, to give a comprehensive and independent view on the suitability of granting a Patent on those applications. Inevitably there are sometimes disputes with applicants over this view. As part of the process examiners will converse with applicants to try and resolve any matters in dispute, either on the technology or on conformity with the law. If these disputes cannot be resolved, a Hearing before a senior official of the Patents Directorate can be arranged on request. This is of course what has happened recently with your application. I believe my previous responses to you have dealt with all the issues it is appropriate for me to comment on. Beyond offering you my sincere sympathy with the difficulties you have experienced with some of your intellectual property dealings in the past I cannot and, indeed should not, comment any further. Given that the official decision on your Patent application is imminent, I do not think further correspondence on that case will be fruitful. As I mentioned in my previous email, It would be better for you to await that decision before deciding on your next course of action. Your other Patent application is awaiting publication and on the Trade Mark issue, I hope you find my advice helpful."
You advised, "Your 'Customer Charter' Page 9 in general terms, Page 8 specifically states you will respond within 10 working days. I made my first submission on 5 April 2010. Now, some 14 months and 3000 words later cannot escape the fact that the body, for which you have total responsibility, is no longer 'Fit for purpose'. Should your problems be within sight of being resolved I will wait a further ten days, failing which I will send the Chancellor my files, so that his researchers can quantify the loss to our country and the unquantifiable loss to the world. Surely that is too high a price to pay." We replied that we have responded to all of the correspondence within the 10 working day deadline as required.
You told us, "I am writing to complain about the excessive amount of time it is taking postal communications from the UKIPO to reach us here in Brussels. Most postal communication from the UKIPO is not received here until at least two weeks after the date indicated on the communication. I have two particular cases where letters dated 28 April 2001 and 4 May 2011 were not received her until 21 June 2011. I have attached copies of the letters in question. In the first case, this means that only seven days of the original period for response remain for me to inform my client, receive instructions and respond. In the second case, a warning of refusal under s.20, the letter was not received until after the s.20 compliance period had expired. I have discussed this issue with the various members of UKIPO staff handling the particular cases informally, but it is clear to me that this is not something that they have power to change. At the root of this problem appears to be that the UKIPO insists on using surface mail delivery to non-UK addresses. This means that the 2-3 day delivery in the UK becomes 2-3 weeks elsewhere. This means that any applicant with an address for service in the EEA but outside the UK is receiving a second-class service. The Act and Rules make it clear that an applicant can have an address for service anywhere in the EEA. This implies that the UKIPO will deal with an address anywhere in the EEA in the same way but in practice, this is clearly not the case. I believe that a simple solution to this problem is to use air mail for communications outside the UK. There is nothing in the act or rules that forbid this and it would result in non-UK addresses receiving essentially the same service as UK addresses. In effect, this is just the same as paying for an international phone call when telephoning a non-UK location. In this respect, the UKIPO makes no distinction and service by phone is at the same, generally excellent level anywhere. I trust that you will make the necessary changes to address this issue without delay since continuing with this situation is clearly damaging to certain groups of applicants. I look forward to hearing from you." We said, " I am sorry to read you have experienced some delays. I also note your request for us to change from a surface delivery type system and move to air mail system for delivery outside the UK. Our Office does not use a surface mail delivery system for non-UK addresses. We employ DHL to handle our overseas mail. DHL then fly the items to their overseas hub (at Brussels). This process is expected to take two to three days. We contacted DHL to investigate your delays, who have reported no known disruption to their service. One letter was delivered to a PO Box number but we have no information over the frequency it is emptied. Additionally items mailed by DHL do not bear a date posted impression so this makes it difficult for us to accurately track local delivery times of individual items. As an Office we do investigate ways of best meeting our customers’ requirements whilst balancing up the need to provide value for money. We think the DHL method is advantageous both to us commercially and provides a good customer service. At the moment the issue of correspondence by electronic means for Patent applications is very much on the agenda for improvements to our service delivery. Our recommendation currently is to limit email correspondence on published, but particularly on unpublished applications, to exceptional cases where the issues are time critical and only at the informed consent of the applicant or their agent. In such cases we will take security precautions available to us. But correspondence will be sent in PDF by unencrypted email, which carries an intrinsic risk of being intercepted. Any help on this then speak to the Examiner on a case by case basis if the need arises."
You told us, "That you were unhappy with the case decision and wish to arrange a meeting with the Chief Executive to review." We said, "As explained in the official letter of 27 June 2011, there is no provision for the sort of review you are seeking. From your letter, I understand that your complaint is that the decision does not reflect the Value, time, depth or truth of your contribution to the claimed invention, in other words, you consider the case officer to have come to the wrong conclusion. In entitlement cases such as this one, the Office is acting as an impartial tribunal. This is now a matter for the courts, should you choose to appeal the decision. However, while there is nothing I can legally do to alter the decision in anyway, we are always keen to ensure that the service we provide is a good one. If you feel that the way in which we handled your application was deficient in some way, I would encourage you to contact my colleague who has overall responsibility for the Office's Patent tribunal functions."