For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 29 November 2011

The Advocate General's opinion in the IP TRANSLATOR case - clear and precise?

Advocate General Bot, the second. Fresh today - and again from busy AG Bot - comes the eagerly awaited opinion in a case, in which the IPKat has taken a special interest: Case C-307/10 Chartered Institute of Patent Attorneys aka the "IP TRANSLATOR" case (click here for some background and links to earlier IPKat posts). In a nutshell, the case concerns the question whether the words "IP TRANSLATOR" are registrable as a UK trade mark for "education; providing of training; entertainment; sporting and cultural activities" in Class 41, given that none of those words is remotely connected with IP translation but that those same words are the class heading for services which include "translation".

This preliminary reference to the ECJ by The Appointed Person asked the following questions:

"Is it:
(1) necessary for the various goods or services covered by a trade mark application to be identified with any and if so what particular degree of clarity and precision?

(2) permissible to use the general words of the Class Headings of the International Classification of Goods and Services established under the Nice Agreement ... for the purpose of identifying the various goods or services covered by a trade mark application?

(3) necessary or permissible for such use of the general words of the Class Headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4/03 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003 (OJ OHIM 2003 p.1647)?".
In a 98 paragraphs long opinion the Advocate General Bot today answered these questions as follows (highlighting by the IPKat):
(1) (a) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark are to be interpreted as meaning that the identification of the goods or services for which the applicant seeks protection must satisfy requirements of clarity and precision which are sufficient to enable the competent authorities and the economic operators to determine accurately the scope of the protection conferred by the trade mark.

(b) Those requirements may be satisfied by a specific list of each of the goods and services for which the applicant seeks protection. They may also be fulfilled by identification of the basic goods or services enabling the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned. [IPKat: this is further clarified in paragraphs 71 - 78 , with paragraph 78 stating "the clarity and precision required must be assessed on a case-by-case basis, according to the goods or services for which the applicant seeks protection, whether it is a national or a Community trade mark."]

(2) Directive 2008/95 and Regulation No 207/2009 are to be interpreted as not precluding the applicant from identifying the goods or services for which he seeks protection by using the general indications of the class headings of the common classification of goods and services for which a mark is registered, provided that that identification satisfies the necessary requirements of clarity and precision.

(3) Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade marks and designs) (OHIM) of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, by which the President indicates that OHIM does not object to the use of any of the general indications and class headings as being too vague or indefinite and that the use of those indications constitutes a claim to all the goods or services falling within the class concerned, does not guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether a national or a Community trade mark.

Interesting are paragraphs 91 to 96 of the opinion insofar as they include some 'policy' considerations:
95. "… although the interpretation adopted by OHIM [IPKat: ‘“class-heading-covers-all” approach’] appears, on the face of it, to facilitate the registration of trade marks in the public registers, it leads ultimately to an increase in the total number of trade marks registered and protected in the Union and, accordingly, in the number of conflicts which arise between them. Far from ensuring sound administration, it also does not guarantee undistorted competition in the market.

96. "… [OHIM's] interpretation does not guarantee legal certainty. As pointed out inter alia by the United Kingdom, German, Irish and French Governments in their observations, the Nice Classification is an evolving instrument. The tenth edition of that classification, which will come into force on 1 January 2012, includes, under unchanged class headings, new goods and services. Now, we cannot limit the substantive scope of the trade mark to a text which may be amended at the whim of an evolving market." [Merpel nods, 'sounds good but how will it work in practice?']
At first reading, this Kat thinks that AG's Bot opinion will please some but it might make others worry whether they should adopt a different trade mark specification strategy sooner rather than later. The CJEU's final decision, should it follow the AG's guidance, could potentially change the interpretation of about 25% of trade mark specifications in the EU and could also mean the end - or at least a substantial change to 'OHIM's "class-heading-covers-all" approach'.

Merpel, who has so far only had a very quick glance at the opinion is a little confused: "case by case" basis is not as clear and precise as she would have liked, even though she half expected such a statement. Hopefully, the Court of Justice will provide some further guidance on this point...?

The AG's opinion can be retrieved by clicking here.

To read about a "Meowlingual Cat Translation Device ", please click here

2 comments:

Aaron said...

Surely it has to be sooner (i.e. before the judgment). In theory you could amend the specification now and be specific, whereas later you may not be able to do that as the President's communication will have been found to be "irregular".

Let's wait and see how things develop - will we see claimants raising "legitimate expectation" at a later date should they be unable to amend to limit the specification to include the goods of interest after the ECJ's decision comes out? Will we see defendants alleging that the effect of the decision is that the president's communication (and the practice) was NEVER legitimate such that the eventual amendments extended the coverage?

I expect to see both.

How much easier it might have been if OHIM admitted the error, communicated that it would not continue the interpretation after date [x] and allowed a period of 1 year for "reclassification".

Let's remember that the ECJ said it was contrary to the DIRECTIVE not just the Regulation - so national registries will need to keep an eye out for the outcome, non?

Peter S said...

I feel this is a good move forward for Community Trade Marks. For too long there have been applications accepted using the class headings without so much as a sniff of a question of intention of use. The OHIM registry is littered with wide, open ended classifications including using class headers which is precluding others from using similar marks for ultimately completely dissimilar goods – this might not be the intention but I believe it is a real consequence of OHIMs dare I say, at times overly liberal approach to classifications.

From a practical standpoint, the EUROCLASS system which enables pretranslated classifications to be used is a further example of the unnecessary width of applications. The fact that OHIM encourages the use of this method of drafting classifications makes the problem even worse – all down to OHIM trying to cut the work out in translation costs if someone dared to actually correctly classify their goods or services to a correct and honest specification. An applicant can use such a wide birth of classifications, safe in the knowledge that OHIM will never query it in several months of Sundays.

Perhaps I am on my high ground as a relatively ‘narrow’ filer, but take class 16 for the endless paper goods and book binding of the header really does have a practical consequence of unduly bringing two trade mark owners into conflict when in reality, if they really looked at each other’s business activities they are poles apart from genuine conflict and in legal terms, confusion on the part of consumers.

Maybe the real test will be if those drafting classifications and take heed and give a fair and proportionate account of what their client is actually using the mark for.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':