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Tuesday, 8 February 2011

A Touch of Class: latest news of IP TRANSLATOR

A movie in which "... nothing, absolutely
nothing, goes as planned"
The IPKat keenly followed the early stages of the IP TRANSLATOR trade mark application dispute, which has gently led to a reference for the preliminary ruling from the Court of Justice of the European Union on the increasingly controversial, if for some folk esoteric question of the effect of designating a Nice Classification heading as the specification of goods or services for which registration of a trade mark is sought.  The easy example is a designation of the Nice heading for "Musical Instruments": does it also cover music stands, since they fall within the same Class for which "Musical Instruments" is the heading, or does the fact that the applicant's designation doesn't say "music stands" mean that his application won't cover them? (See earlier IPKat posts here and here for some pertinent background).

Anyway, there have been some developments.  Let the IPKat's friend Richard Ashmead take up the story:
"I was in The Hague last week for the Benelux Office for Intellectual Property's 40th anniversary celebratory seminar and the launch of the associated commemorative book, to which you are of course a contributor [IPKat team member Jeremy wrote a chapter, "Interpreting Territorial Use of a Community Trade Mark in Light of the Joint Statements" for this book, which is entitled Trademarks: All About Perception? ... The Kat hopes the BOIP is giving it away free, because he can't find any evidence from BOIP's publications page to suggest they're selling it]. It was an excellent day of thoughtful substance, good company and warm hospitality [Merpel wonders: at someone's expense ..?].

My contribution to their book is entitled “An Approximation of Harmonisation and Differences in EU Law & Practice on Class Headings” and includes an explanation of the IP TRANSLATOR reference case now before the ECJ. The discussions I had there, and indeed sight of your name in the book, reminded me that IPKat readers may like an update on this case. You will recall my earlier report on IP TRANSLATOR and the class headings dispute here. Here briefly then is where the case has got to:

The Appointed Person's reference order of 27 May 2010 was notified by the ECJ to the official parties at the end of July 2010. That notification set the usual somewhat elongated two month term to mid-October 2010 for those parties to submit written observations to the court, and indentified the parties entitled to submit observations as

* the parties in the case before the national court,
* the Member States, the Commission and, where appropriate,
* the European Parliament, the Council and the European Central Bank and
* non-EU-member EEA States and the EFTA Surveillance Authority

I have informal reports that the Czech Republic, Denmark, Germany, France, Austria, Poland, Portugal, Slovakia, UK and the Commission have filed written observations in due time, but have to wait for the court to arrange for translations of all observations (I assume into all 23 EU languages), and then send them to the parties [The position isn't quite so grim, says Merpel.  Assuming that each of the submissions is already in one of the official languages, it will only need to be translated into another 22]. It is notable though that all the member state observations come from countries reported (eg in the survey published by MARQUES in February 2008 which can be found on MARQUES’ website) as applying the “means-what-it-says” approach to class headings within EU registrations. I do not know what line the Commission has taken.

It is not easy to predict when these translated observations will be sent to the parties, but several experienced guesses have gone for Easter or thereabouts. There are though also informal reports that OHIM has made a request to the court to become a party to the reference case in some way [The IPKat cannot understand why OHIM was not on the original list. IP TRANSLATOR without OHIM is like Hamlet without the Prince]. Whether that, if true, will delay the normal path of a preliminary reference case before the court I cannot tell. I suspect that it would not and that the court would either decline the request or just add OHIM to the (court-recognized) list of parties, in parallel with the normal progress. If the court does allow the request it is not clear if and by when OHIM could file written observations. The court’s "Notes for guidance of counsel” do say, though, that any party which has not submitted written observations retains the right to present oral argument if a hearing is held – a point of possible interest to the other member states which did not file written observations.

While we are waiting for copies/translations of the written observations your readers may be interested to read on MARQUES’s website its 5 October 2010 reasoned comments on IP TRANSLATOR. More recently, on 28 January 2011, the European Communities Trade Mark Association (ECTA) published its equivalent position paper, available on ECTA’s website here. Both address both sides of the debate, “means-what-it-says” and “class-heading-cover-all”, and conclude in favour of the former, as do I [me too, says this Kat, for what it's worth -- but it's better to have everyone doing the same thing, for sake of good order and to reduce the risk of error and confusion]. One way or another though it remains clear that it is the dispute between two diametrically opposing official practices in what is supposed to be a harmonised area of EU law which needs to be addressed.

The EU overall is I think working rather well towards harmonisation of its trade mark laws. In some aspects we have achieved it, but in more we are still at a stage of “approximation of harmonisation ….” (hence my title in the BOIP book). That is to be expected, given the complex social, economic and legal backgrounds from which a fully formed internal market has to develop. The class heading dispute though provides an interesting, and in practice troubling, example of how harmonisation by directive-required legal provisions can be frustrated by reading new laws through historic national spectacles. It also shows how difficult this sort of dispute can be to resolve once it has taken root in an EU-wide legal system".
The IPKat thanks Richard for the time and trouble taken in producing this update.  He'd also like to know why there doesn't seem to be a convenient way for us all to read the submissions made by the Commission and various member states.  There shouldn't be too much that needs to be hidden from view, surely. We're only talking about trade marks ...

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