Telcos powerless in 'next generation' name wrangle

Telecoms firms will be powerless to stop US firm Wireless Facilities Inc from registering the phrase 'next generation networks' as a European trade mark, according to a trade mark attorney. The company will have to wait until the trade mark is awarded before it can take any legal action.

The phrase has been accepted for observation by the European Trade Marks and Designs Office, a process that is preliminary to granting a full trade mark. Telecoms firms, led by Glasgow's Thus, are opposing the registration on the grounds that the phrase is a generic term.

There is no action that Thus and telecoms regulator Ofcom can take, however, until after the trade mark is awarded, 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, 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 continued. "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.