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COMMUNICATION BREAKDOWN


IS VITAL


We look, but do we see? When we face a problem do we prefer to talk to the other party, or do we act according to our understanding only? Diffi culties that we call ‘problems’ can sometimes be solved easily through eff ective communication. Business is a big part of our lives and the same principle can be applied to it. Here is a real story from business life about non-communication or miscommunication and how to solve a particular problem in business, particularly in the IP world.


In 2009, my colleagues from the French fi rm Cabinet Regimbeau kindly contacted me because of an Offi ce Action issued by the Turkish Patent Institute (TPI) regarding their client Limagrain Verneul Holding’s (LVH) International registration 967909. T eir client’s application had been partially refused because of the earlier registration 766286 in the name of Societa Cooperative Agricole Limagrain (SCA Limagrain) registered before the TPI. Limagrain works in the fi eld of agricultural products/services, and has been very successful over many years across the world; it is a market leader. Various companies belong to the Limagrain Group, with SCA Limagrain being the parent company.


One might assume it would be easy to overcome an offi ce action by submitting a letter of consent, but consent letters are not accepted in Turkey. So, the client wanted to assign the Turkish part of registration 967909 to SCA Limagrain and overcome the problem in that way, because then both of the marks would be owned by the same company. Since 967909 is a WIPO application,


naturally, all changes had to be done through the International Bureau. Our French colleagues did their part and applied to WIPO for recordal of assignment and we did our part in Turkey by fi ling an opposition against the partial refusal decision of the TPI, informing them that 967909 would be transferred to SCA Limagrain, so the marks would be owned by the same company and the partial refusal decision could be revoked.


However, soon aſt er we received a call from the TPI examiner who was in charge of our opposition saying that even though only registration 766286 had been cited against 967909 before, while examining the fi le, she had noticed that there was another Limagrain LG-device mark under number 971178. T is latter registration should have also been transferred to SCA Limagrain to overcome the partial refusal of 967909. She added that even though she had already sent her request to WIPO, she had not seen notice of our client’s attempt to transfer the registration.


We contacted our colleagues in France, who said they had not received notifi cation from WIPO.


A second step to transfer 971178 then started. At that point, LVH decided to change its company name from LVH to Limagrain Europe (LE), and a deed was signed between LE and SCA Limagrain. An application for recordal of change of company name from LVH to LE was fi led before WIPO. Meanwhile, we sent a letter to the TPI informing the examiner of what we were doing to solve the issue, while emphasising that the client had not received a notifi cation from WIPO over the transfer of 971178.


So all the LG-device marks would be in the name SCA Limagrain for Turkey. Before we handled these fi les, some of Limagrain’s LG-device applications had been refused because of the same type of problem, therefore, to complete its registrations for classes 31 and 44 and to fi ll


“IN A RELATIVELY SHORT PERIOD, THE CLIENT’S MARKS WOULD BE SAFE AND REGISTERED IN OUR JURISDICTION … OR AT LEAST THAT’S WHAT WE THOUGHT.”


the gaps in the portfolio, the client decided to fi le new national applications in Turkey for its LG Industry Approved device mark in class 31 and for its LG Animal Nutrition device mark in classes 31 and 44 in the name of SCA Limagrain. National applications were fi led accordingly.


In a relatively short period, the client’s marks would be safe and registered in our jurisdiction … or at least that’s what we thought. Yet life has a good sense of humour. T e application for the LG Industry device was approved and published in the Offi cial Bulletin, whereas we learned by offi cial notifi cation from the TPI that the LG Animal Nutrition device mark (we can call it 2010 national application from now on) was partially refused for class 44 because of the earlier registration 967909 in the name of LVH!


Should not registration 967909 have been transferred to SCA Limagrain? T e TPI records shed no light and the mark was still in the name of LVH. We had until May 23, 2011 to fi le an opposition against the partial refusal decision.


World Intellectual Property Review January/February 2012 55


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