An application to register the phrase has been
accepted by the Community Trade Marks Office, a
process that is preliminary to formally granting a trade mark
registration. Telecoms firms, led by Glasgow's Thus, object
to the registration on the grounds that the phrase is a
generic term.
However, Thus and telecoms regulator Ofcom can not
formally oppose the application until after the trade mark
application is granted, according to a trade mark specialist. "Thus
and Ofcom will not be able to formally oppose the grant of the
application on such grounds," said Lee Curtis, a trade mark
attorney at Pinsent Masons, the law firm behind OUT-LAW.COM.
"The 'next generation networks' application is still pending,
but under the provisions of the Community Trade Mark Regulation,
which governs the grant of Community Trade Mark Applications,
applications can generally only be opposed on the basis of prior
rights in a conflicting brand, not on so-called absolute grounds of
descriptiveness and lack of distinctiveness," said Curtis.
"Although Thus and Ofcom could submit 'observations'
commenting on the grant of the application, in my experience the
CTM Office rarely act on observations from third parties and Thus
and Ofcom will have to actually wait until the application is
granted before they can launch any formal challenge to the grant of
the application via the invalidity proceedings of the CTM Office,"
he said. "By that time Wireless Facilities Inc may already be
attempting to enforce their rights in the registration against
third parties."
Telecoms firms have been using the phrase 'next generation
networks' to refer to high bandwidth, often optical networks which
allow a previously impossible degree of integration between voice
and data services. Thus, in particular, has long trumpeted its
'next generation' capabilities.
In order to object, either now or after the trade mark has been
granted, telecoms companies will try to prove that they were using
the phrase prior to the application. Thus is fighting to challenge
the registration on the grounds that it is generic, and wants
industry regulator Ofcom to join its fight.
"We will be opposing this application and we are calling on the
industry and Ofcom to support us in this matter," said a statement
from Thus.
A Thus spokeswoman said that the firm had been using the term
'next generation networks' for two years and has already collected
supporting documentation of its use dating back to the start of
2005. WFI applied for trademark protection in the EU in 2005.
"We need to prove that they can't have it, that it is a very
generic industry term," said the Thus spokeswoman. "We need to
provide evidence that it is a generic term, that we have been using
it for some time and that others have too."
"Whether or not Wireless Facilities Inc can obtain a trade mark
registration to the words 'next generation networks' will depend
largely on whether the term is 'devoid of distinctive character' in
the parlance of the Community Trade Mark Office or is a descriptive
term used to describe the goods and services covered by its
application," said Curtis.
