A GLAGOW law firm that specialises in intellectual property has failed in its bid both to trade mark the word loch and to stop another business registering nine individual marks containing the word.
Cloch Solicitors, which is run by lawyer Philip Hannay, had sought to register the word for use in relation to legal services, but its application was opposed by Loch Employment Law, a Tunbridge Wells firm that operated an office in Edinburgh between 2016 and 2018.
Loch Employment Law is part of the wider Loch Associates Group, whose nine applications for trade marks including the word loch, all of which were opposed by Cloch, have now been granted.
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Finding in Loch Employment Law’s favour, UK Intellectual Property Office hearing officer Oliver Morris said that “there is no evidence whatsoever that Mr Hannay had, or has, any legitimate interest in the loch trade mark”.
Mr Morris said that while Cloch’s application had been filed before any of Loch Associates’, “the facts clearly show that when Mr Hannay filed the application for the loch mark he knew about [Loch Employment Law’s] expansion under the Loch name to Scotland”.
“I come to the clear view that when Mr Hannay filed the mark he had no intention of using it in trade and that it was filed to give him the upper hand in the dispute, acting as a spoiling mechanism against [Loch Employment Law],” Mr Morris added.
Mr Hannay, who was ordered by the Intellectual Property Office to pay £4,400 to Loch Associates, said he plans to appeal the ruling because he feels that Mr Morris failed to take account of various points of Scots law when making his decision.
"In this case we referred to a Scottish institutional writer [ a source of Scots law] and the barrister on the other side said they didn't need to take account of that, they just needed to take account of cases," he said.
"That's a whole area of Scots law that's being side stepped.
"I'm disappointed in the decision and feel it adds to a catalogue [of rulings] that strike against the Scottish legal profession."
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Earlier this year Mr Hannay signed a co-existence agreement with Glasgow coffee roasting business The Steamie in relation to the use of the words Glasgow Kiss in its branding.
Mr Hannay had registered the words for use on clothing and chocolates in 2007, but did not object when The Steamie applied to trade mark them for use on clothing, coffee and alcoholic drinks.
He said at the time that he did not oppose the application from The Steamie’s founder Stephen Meek because they were “better just teaming up together”. Mr Meek’s registration was granted in June.
Loch Associates managing director Pam Loch had refused to enter into a similar arrangement with Mr Hannay, with the judgment from the Intellectual Property Office noting that he had written to her in 2016 stating that he would have accepted a coexistence agreement in exchange for a payment of £5,000.
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Speaking after the decision was handed down, Ms Loch said: “We were disappointed that we were unable to reach an amicable agreement with Mr Hannay before he decided to start proceedings to obtain the loch trademark and we felt we had no choice but to oppose the application given we started trading as Loch Associates over 10 years ago.
“However, we are delighted with the judgment from the IPO which we believe accurately reflects the reality of the situation.”
Last year Cloch applied to trade mark the term ‘legal engineer’, which is used by a number of law firms to describe a specific technology-focused job.
That application has been opposed by international law firm Pinsent Masons as well as Cambridge-based practice Wavelength Law and London legal services business HighQ Solutions.
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