Researchers will have to choose between a troubled official methodology and their own position
The Register of methods for forensic expertise includes a new methodology for conducting expert studies related to brand identity. The authors of the document argue that it is based on the global best practices. But Ukrainian experts point to numerous shortcomings.
Estimates and critique
Specialists from the Research Center for Forensic Examination on Intellectual Property (the Center) have developed the Methodology for conducting expert studies related to the identifications. The main purpose of the document was to summarize expert studies related to the brand identity, which, according to the authors, had to solve the problem of heterogeneity of expert opinions made in the framework of expert examination of trademarks, commercial names and geographical indications.
In the methodology, as its creators note, the theoretical conclusions and provisions which are necessary for carrying out of forensic researches related to various intellectual property designations of goods, services and parties to business transactions are given. The characteristics used to describe all varieties of identifications are classified. The main principles that should guide a forensic expert in resolving issues related to research of industrial property objects are described. The sequence of the corresponding expert research is outlined, the essence and content of its main stages are determined.
The basis of the methodology were the approaches to determining the similarity of the brand identities, which are set forth in the Regulations for the compilation, submission and consideration of applications for the issuance of a certificate of Ukraine for a brand mark for goods and services, in the Methodological Recommendations on specific issues of examination of the application for a brand mark for goods and services, in the rules of examination in the process of obtaining rights to trade marks in the member states of the European Union, the United Kingdom, the United States of America, Switzerland and other countries.
The work of the Center was highly evaluated by the Coordinating Council on issues of forensic examination under the Ministry of Justice, which recommended introducing the methodology to the Register of methods for forensic expertise on 23.03.2018.
It would seem that, after having got the unification of the researches, Ukrainian experts would have to breathe a sigh of relief. Instead, the developers were poured with criticism. The experts told about the reasons of their outrage during a meeting of the Ukrainian Bar Association on Intellectual Property.
The expert Oleksandr Doroshenko accused the authors of the methodology of carelessness. As arguments, he quoted the text, which was full of contradictions and inconsistencies.
Among the many slips, the specialist attention was attracted with the term “intermediate conclusions”, which, according to the developers, should be in line with the first impressions of the expert when comparing the IP designations. The significance of coordinating the intermediate conclusions and impressions of the specialist in conducting a research remains unclear for O. Doroshenko. Especially since the developers went further and developed the theory of intermediate conclusions, noting that they should coincide, and also be consistent with the case materials, explanations of the parties and additional experts involved, data known by the expert. Then, the speaker rather rhetorically asked: what is the role of the expert and what should be done if the conclusions are not consistent with the above?
Presenters suggested that intermediate conclusions can be made in a comprehensive study – phonetic, graphic, and semantic. Thus, the conclusions made at each stage of the study, after all, should come together with the first impression of an expert. Or, as the presenters ironically noted, the study will continue until everything comes together. O. Doroshenko himself does not share this kind of humor, because he believes that the methodology should be clear, and not be interpreted by each expert in his own way. Otherwise, an expert will not be able to explain his own position in court.
Another inaccuracy was mentioned by Kateryna Sopova, the deputy head of the Center for expert research of the Research Institute of Intellectual Property of National Academy of Law Sciences of Ukraine. She had to pore over several times almost every paragraph of the methodology to understand what the developers meant. In the end, the expert discovered distortions, terminological inaccuracies and obvious nonsense. For example, it is unclear what the following sentence means: “The falsity of the elements is obvious. It does not require any justification”. Then why conduct the verification at all? Or else. The authors of the methodology identified “homogeneity” and “kinship” of goods and services, although 10 years ago the expert community came to the conclusion that these terms are different.
Also the presenters noted that, in addition to numerous methodological and terminological obscenities, the document contains grammatical errors. And this is not acceptable for a text that is publicly available.
The experts highlight the following reasons of this mess: the authors of the methodology, while drafting the document, did not involve leading specialists and did not refer the groundwork to the general discussion. As the result of the “behind-the-scenes” developments, a half-completed document impossible to work with was created.
On their own responsibility
In the future, according to experts, the use of such a document will have extremely negative consequences. Referring to this document, a skilled lawyer will be able to cast doubt about any expert opinion filed to the court on formal grounds. All you need to do is ask an expert a few questions on which the experts do not have a unanimous answer.
Therefore, the legal community must definitely determine the value of conclusion which is made without the use of the methodology. According to the lawyer Victoria Sopilniak, lawyers would like the experts to come to an agreement between themselves and speak a common language, since they are called upon for the qualitative findings, but not for the methodology.
The position of the lawyer also confirms the logic of the new procedural codes. Nowadays the lawyers can choose any person who has the special knowledge sufficient to conduct the study as an expert. His task is not only to carry out the expert study, but also to substantiate the researches to the court and parties in a clear, comprehensible manner. Moreover, it is advisable to do it as briefly as possible, said the lawyer Oleksandr Mamunya. Perhaps, it is the reason, he jokingly suggested, why even in the Soviet times, a number of techniques and methods, for forensic examination among them, began to be developed. However, the lawyer believes, that now we have to abandon outdated stereotypes and to provide an opportunity to the experts to conduct researches with common sense. That is the task of the lawyers.
Nevertheless, whether non-state experts are ready to neglect the methods? Indeed, even during the discussion, they did not consider any other option, except to improve the text of such a ridiculous document. However, lawyers said, that under the old procedural codes the experts’ findings did not meet the procedural requirements. Thus, it is obviously, the methodologies approved by the Ministry of Justice should not be a panacea for them.