The small business perspective
Several business owners – some of whom could not speak on the record due to ongoing legal proceedings – have talked to WTR about how they have been affected by this rampant trademark activity. While a number have faced and continue to face challenges from Gleissner-related entities (either through oppositions to their marks or UDRP actions), others have challenged marks that Gleissner filed or obtained registered rights for. The issues that they raise highlight wider concerns that several small business owners are experiencing with regard to application and opposition procedures at the UKIPO.
A pair of purple marks
Two successful oppositions before the UKIPO, both involving marks in Class 38 that refer to the colour purple, are an excellent example of these concerns and offer several invaluable pointers.
The first was for the term PURPLE.COM, filed in March 2016 by one of Gleissner’s companies, Purple Technologies Limited, and registered in August 2016. Technology giant Western Digital hit back with a cancellation action, presumably due to the numerous registered marks that it owns for the term WD PURPLE, and in December 2017 it prevailed. Data scientist Jeff Abrahamson had owned the website ‘purple.com’ since 1994. Speaking to WTR, he confirmed that he was unaware of the PURPLE.COM trademark and was surprised that it had ever been approved. “My first thought when I heard about it was to be amused, it seems like such an indefensible move,” he said. “It makes me wonder whether UKIPO examiners do any due diligence at all.”
The second contested trademark, PURPLE, was also applied for by Purple Technologies Limited, this time in October 2016. The mark was opposed by UK IT consultancy business Purple Computing, which has owned the trademark PURPLE COMPUTING in Class 38 since 2011. Before the hearing, the company’s founder James Hart published an open letter about the case on Purple Computing’s website. He also reached out to WTR about the opposition. “We’re essentially in a position where we can either defend our trademark or throw thousands of pounds we cannot afford into a black hole of legal fees, or suffer the potential long-term consequences of a severely diluted trademark if we do not defend it,” he explained. “If we fail to defend our trademark in this case, then Purple Anything in Class 38 becomes irreparably weakened as a trademark and almost impossible to defend from anybody passing off or otherwise infringing upon it in future. In my view, this could set a precedent which completely undermines the whole system.”
Hart acknowledged that Gleissner had done nothing wrong – he was merely using the system in place. Instead, much of his frustration was directed at the UKIPO’s procedures and processes, which – he maintained – place an undue burden on existing rights holders, including the need to prove their own use. “My total outlay might cost upwards of £3,500 in fees plus several days’ work in compiling invoices, website clippings and other documents which prove that I am actively using my five-year-old trademark. They may then request further submissions at the next round of evidence, costing even more in legal fees and time. Why the hell should a company incorporated and submitting regular annual returns for seven years have to submit evidence of this nature to… somebody with no tangible trading history?”
He expanded: “Our solicitors advised us that the typical process for the UKIPO nowadays is to accept all applications, then leave it up to the registrants and applicants to sort it out between themselves, through litigation if necessary. Surely the UKIPO should be the gatekeeper for UK-owned trademarks and offer at least a basic level of protection to businesses, by attempting to take some common-sense decisions and err on the side of caution when a new application first arrives? The same process of accepting everything wouldn’t exactly work well for patents.”
After the hearing, Hart had warm words for how the firm representing him, Blake Morgan, had offered flexibility with regard to the financial burden – and how crucial this was. “When faced with this potentially complicated and time-consuming challenge, which addressed a fundamental issue at the very heart of the United Kingdom’s trademark application process, Blake Morgan offered to work on a cost-award-only basis to fight our corner. We would have really struggled to justify the legal fees to fight this case, where the likely costs award – as anticipated – ended up being five times less than the billable hours. [Gleissner’s Purple Technologies was ordered to pay £1,200.] I am grateful to Blake Morgan for battling this over endless months for the good of the system, rather than their own profits.”
The attorney’s view
Representing Hart in the PURPLE decision was Ben Evans, a senior associate and chartered trademark attorney at Blake Morgan. He admitted to WTR that in the end the decision was “a fairly straightforward likelihood of confusion matter” (the bad-faith element of the opposition was not addressed). Nevertheless, it still advanced a cause that is of concern to many rights holders. “It is important in adding to the weight of adverse decisions against Mr Gleissner’s operations and therefore should be of use to fellow practitioners, and brand owners, in similar cases,” he argued.
Indeed, Evans had further advice for those who are battling – or are considering opposing – one of the hundreds of marks filed by Gleissner in the United Kingdom. “Stand firm and plead bad faith,” he urged. “I understand that the UKIPO, in particular, is well aware of Mr Gleissner’s activities and even though it may increase costs, a hearing is likely to be a good approach – although in the PURPLE case we vacated the hearing once it became clear that Mr Gleissner would not be attending.”
With regard to costs, Evans acknowledged that the flexible arrangement that Blake Morgan offered Purple Computing is not possible for all law firms. Instead, he recommended that small businesses consider free legal services that could assist with trademark challenges. “Registry proceedings are complex and time consuming and while it might be nice to offer all clients a flexible arrangement, more often than not it’s simply not feasible,” he stated. “However, CITMA offers a really good pro bono service and the UKIPO offers an advice clinic that SMEs may find of interest. In fact, I have always found the registry to be extremely understanding with lay-persons and if representation can’t be found or afforded, then businesses shouldn’t be afraid of defending themselves.”
Like the business owners and attorneys that WTR spoke to, Evans doubts that there is anything the UKIPO – or indeed any national office – can do to address Gleissner’s large-scale trademark filing activity. It is, after all, entirely legal. “Mr Gleissner uses the tools that are available within the system and it is for brand owners to defend themselves using those same tools,” Evans stated. “The only thing I would like to see is increased costs awards – that could lead to more firms offering flexible fee arrangements and may act as a deterrent to Mr Gleissner.”