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.

Wednesday, 20 June 2012

IP TRANSLATOR: it's all happening!

Having taken Luxembourg by storm, the Chartered Institute of Patent Attorney's
crack squad of Translationistas were just about to march on Alicante, when
Communication 2/12 stopped them in their tracks ...
Yesterday afternoon the Court of Justice of the European Union gave its long-awaited ruling in Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR ruling, on which see yesterday's post  here ). So much has happened in such a short time that even a seasoned blogger like the IPKat is having to work his paws off in trying to keep his readers updated. First, the UK's Chartered Institute of Patent Attorneys (CIPA), which initiated the trade mark application that started the whole thing off, issued a statement in which it proclaimed: "UK Patent Attorneys change EU law". Said CIPA:
  ... The case centred on an EU-wide legal dispute on how to how determine the coverage of trade mark registrations, leaving trade mark owners and other trade mark users confused over the legal scope of the owners’ monopoly rights. The legal case ... was started by CIPA in October 2009 and reached the Luxembourg-based Court of Justice in June 2010. CIPA was represented in the Court by Michael Edenborough, QC. On the way to yesterday’s judgment it received formal support from a record number of EU governments as well as the Commission, and the Court’s judgment will now bring all of the EU official trade mark offices into line, including OHIM (the EU’s official trade mark office), with the current and historic UK approach [fortunately for us all, CIPA isn't the slightest bit triumphalist ...].

Patent Attorney and CIPA spokesman Richard Ashmead [who has toiled long and hard, almost since the beginning of recorded time, to explain to people why this issue is important and how best it might be resolved] welcomed the news. “This EU Court of Justice judgment in CIPA’s favour is an important step towards clarity and consistency of EU trade mark law, and much in the public interest” he said.

“Until now,” said Ashmead, “trade mark owners could not be sure what competitive products they could control, and businesses could not reliably establish what new brands they could adopt without fear of being stopped after launch by court action for trade mark infringement. The Court underlined the importance of clarity and precision when describing the goods and services covered by a trade mark application, putting an end to a difficult legal argument between EU trade mark authorities and making the coverage of registered trade marks much clearer for business communities within and beyond the EU. This case brought by CIPA will make trade mark registration and management more straightforward by eliminating an unnecessary, and officially imposed, degree of uncertainty.”

The wording of the judgment raises some interesting questions as to how key points will be implemented. CIPA is closely analysing the judgment and further reports will follow. CIPA will shortly host a seminar to discuss the implications of the judgment.
Not all commentators expressed the outcome in quite such black-and-white terms. Writing for Bird & Bird, Nick Boydell was a little more cautious:
Contrary to the earlier opinion by Advocate General Bot handed down on 29 November 2011, the CJEU did not state explicitly that the "class heading covers all" approach followed by OHIM and set out in communication 4/03 (and followed by the Registrar in this case) is incorrect. However this appears to be implicit in its ruling, in particular the indication that some of the general indications in the class headings are not sufficiently clear and precise and the finding that applications containing all the general indications in a class must specify whether it is intended to cover all of the goods and services in that class.

The decision does not explicitly apply to Community Trade Marks, which are not governed by the Directive but by the Community Trade Mark Regulation (207/2009/EC). This remains to be clarified, however given the generally uniform approach to the harmonised national trade mark laws in the European Union and the Community Trade Mark system, it may be expected that it will do so.

As a practical matter applicants for trade marks must now ensure that where an application for a trade mark is intended to cover all of the goods and services in a class, this must be stated specifically in the application.

The CJEU has not commented on the effect of the decision with regard to existing applications and registrations [the IPKat was concerned that this would happen, though the court didn't need to consider this issue within the context of the questions referred to it. Merpel is pretty sure that it will be just a matter of time before those questions are asked of the CJEU, which -- having done a good deal of its homework already -- will give an answer around two years after the questions are referred to it]. This is in particular relevant to those registered trade mark proprietors who followed communication 4/03 [which dies tonight: see below] and listed all the general indications in the class headings of a particular class without indicating whether the relevant application was intended to cover all of the goods and services in the class.
The IPKat's friend Verena von Bomhard, IPMT partner at Hogan Lovells, even offered a drafting prediction for applicants:
With respect to future trade mark applications, one might expect applicants who want broad protection to add language such as "; the aforementioned covering all goods/services in this class" after indicating all class headings in any given class, and this should be in line with [the] judgment of the Court.
Writing for the World Trademark Review blog, Trevor Little housed his comments under a heading that made it plain what he thought of the ruling: "IP TRANSLATOR decision 'makes matters even more complex'".  He cited a swift response from Hiroshi Sheraton (McDermott Will & Emery):
... but for some cats, sleeping bags are furniture
"The court laid out the objectives of the classification system, namely that a single set of wording should mean the same thing to everyone who reads it (which makes perfect sense). It is possible (for some classes) to use the class headings to cover the whole class, because all goods within that class fall within the natural meaning of the words in the class heading. But for other classes it is not (for example, because sleeping bags do not fall within the normal meaning of ‘furniture’ as used in the class heading). Hence, the court held that strictly applying OHIM's approach (of automatically covering the whole class when the headings are used) runs the risk of undermining legal certainty. However, the solution offered was that national registries should decide themselves whether a specification is sufficiently clear and precise [the IPKat drew attention to this yesterday: whether a product falls within a class heading or not may be regarded as a clear and precise specification by one office and not by another], and that an applicant must specify whether its application for registration is intended to cover all the goods or services in the class".


... Moreover, it is very hard to see how the meaning of a specification can change its meaning, depending on the applicant's specified (and subjective) intention to cover all goods in that class or not.
The latest comment received is from OHIM itself and it is the most important, since it announces not only a response but a change in Community trade mark practice.  In its media release OHIM summarises yesterday's ruling and adds:
... OHIM, together with the EU National Offices, will work within the framework of the existing Convergence Programme towards adopting a common practice on the acceptability of each of the general indications of the Nice Agreement class headings. With this in mind, a letter is being sent today to all of the National Offices and a meeting has already been convened with them for next week to discuss the harmonisation of the classification of goods and services.

In accordance with the Court’s ruling, the Office is updating its filing systems to provide a user-friendly solution when using class headings to claim protection for all of the goods or services in the alphabetical list of the Nice Classification. This update is expected to be in place over the next few days.

In the meantime, an interim solution has been implemented and is accessible via the Office’s website.

... Communication 4/03 has now been repealed and replaced by Communication 2/12. This new Communication enters into force on 21 June 2012 [that's tomorrow -- unless you are reading this in the Antipodes or the Far East, in which case it's already today].
Communication 2/12 is five pages in length and has no illustrations or fun bits. It does however contain these bits:
"V. As regards Community rade marks registered before the entry into force of the present Communication which use all the general indications listed in the class heading of a particular class, the Office considers that the intention of the applicant, in view of the contents of the previous Communication 4/03, was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made [this is probably the most workable solution and, given OHIM's understanding of the previous position, the fairest -- though Mepel thinks that the fact that the Office considers that the applicant must have intended to cover all goods or services in question looks more like an administrative convenience leading to a rebuttable presumption -- and nothing more than that].

The above is without prejudice to the application of Article 50 CTMR ['Surrender'].

VI. As regards Community trade mark applications filed before the entry into force of this Communication and which are still not registered in the case of applicants who use all the general indications of a particular class heading of the Nice Classification, the Office considers that their intention was to cover all the goods or services included in the alphabetical list of the particular class concerned, unless they specify that they had sought protection only in respect of some of those goods or services in that class [so if CIPA had already applied to register as a CTM the words IP TRANSLATOR for services that correspond to the class headings '‘Education; providing of training; entertainment; sporting and cultural activities’, they would still be taken to seek registration for translation services, unless they indicated to the contrary].

The above is without prejudice to the application of Article 43 CTMR ['Withdrawal, restriction and amendment of the application"]".

VII. As regards Community trade mark applications filed as from the entry into force of the present Communication, in the case of applicants who use all the general indications of a particular class heading of the Nice Classification, they must expressly indicate whether or not their intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class [this is the new and exciting bit!].
Interesting, the Kats think, as they look forward to the next bit of this exciting saga.

5 comments:

Steph said...

OHIM has amended its website so that new applicants filing for the class heading, who wish to gain protection for all goods/services covered by that class, must attach a declaration to that effect to their application form:
http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileApplicationCTM.en.do

Anonymous said...

Of course, this leaves wide open the question of how the UK IPO or UK Courts, in inter partes proceedings, would interpret a pre-"Communication 2/12" OHIM class-heading-only specification. They are surely not bound by OHIM's Communication and so free to continue with their "it protects only what is says" interpretation. Perhaps we need another test case!

Ed said...

Interesting choice of picture, which I believe shows the death of Major Pearson, whilst repelling the French Invasion of Jersey in the 1780s. I was looking for some sort of allegorical reference here, but not sure what it may be...

I had to file a few CTMs today with class headings (Class 33 so not contentious). OHIMs solution is practical but pretty trite really. A bit of a wasted opportunity I feel.

Anonymous said...

The UKIPO has already dealt with the question of how it handles CTMs for the class heading - Abercrombie & Fitch's "moose" case.

As for the declaration, the comment that the specification (or rather, its scope) must be self contained kinda precluded the ongoing use of Communication 4/03

Anonymous said...

Thanks, Anonymous #2. The unanswered question I was getting at is whether the Moose approach would withstand review by the CJ, bearing in mind the confirmed need for a uniform approach to interpreting a trade mark spec across the EU.

And I do so agree with your second comment. I think OHIM, to be compliant, needs somehow to have the wording of the actual specs revised, whether voluntarily by owners or otherwise.

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