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Tuesday, 27 February 2007

Latest JIPLP; trade mark classification - it's OHIM v UK

Frosty February might be almost over, and March virtually upon us, but the February issue of the Oxford University Press Journal of Intellectual Property Law and Practice (JIPLP) was determined not to be published until there was at least a prospect of warmer weather. Among the features published in this issue are

* "Deceit and immorality in trade mark matters: does it pay to be bad?", by OHIM Board of Appeal member Gordon Humphreys;

* "Sui generis database protection: a new start for the UK and Ireland?" by Irish scholar, sage and legal consultant Robert Clark;

* A note on the new US trade mark dilution statute by John L. Welch (of TTABlog fame) and Ann Lamport Hammitte (Lowrie Lando & Anastasi).
Full contents of this issue here
Free sample print and online issues here
Details of JIPLP for authors, subscribers and publishers seeking a review
To read the Editorial of this issue ("Bringin eBay into line", on the threats posed to IP owners by online auction sites and what can be done about them) and all previous issues click here


International trade mark classification is another topic that features in the February issue of JIPLP, where trade mark attorney Richard Ashmead, left (Kilburn & Strode) writes on the dissonance between the OHIM and British approaches towards describing and classifying goods in particular classes. The abstract of Richard's article reads, in relevant part:
"The UK Trade Marks Registry and ... OHIM have issued conflicting official guidance notes on the meaning of International Classification class headings in trade mark applications and registrations: OHIM says that a class heading is equivalent to ‘All goods/services in class XX’, and the UK Registry that a class heading is merely an exemplary list of the sort of goods which fall in that class.

OHIM's view introduces an extra-regulatory concept of goods/services ‘directly related’ to those as registered and gives them rights as if identical thereto.

These conflicting views lead to the prospect of otherwise identical UK (and other EU national registrations) and Community trade Mmrk registrations having differing scopes of protection, contrary to the intention of the EU Harmonisation Directive to remove disparities in legal provisions that may impede the free movement of goods or distort competition. The OHIM view gives a registration protection for items not described in its list of goods/services, invisible unless you know the secret code and with nothing to warn the businessman or other non-specialist reader that that is the case".
This article has been available online for a few weeks and has attracted some comments. According to Senior British trade mark practitioner Richard Abnett (Reddie & Grose), below right:
"I don't understand why OHIM still adopts this view when they have more money than they know what to do with, so translation costs are not a problem. I suspect that there is EC pressure to reduce the translation required because they are tying up too much of the facility - I can see no other reason.

There are interesting issues over what happens when the classification is changed (i) when the change includes a change to the class heading, and (ii) when it does not".
Keith Farwell (Phillips & Leigh), below, adds:
"I was taught (by patent agents) that a specification of goods should say what it means and mean what it says. It should be broad without being covetous. The present OHIM & WIPO class heading approach is a menace, not least because it makes searching so difficult.

Personally, I would go towards a US approach of specificity and particularity of wares.

The real devil is in the detail of the Altechnic decision [2002] ... If I want coverage for valves, I most certainly don’t want some wretched Registry clerk restricting my infringement rights to “valves in class 07” ...".
The IPKat feels that, at the very least, there is a serious issue to discuss and he very much hopes that Richard's article will provoke some much-needed thought on the subject. Merpel agrees: she feels very uncomfortable at the thought that the extent of protection given to a trader who is investing in a business is likely to be narrowed through a bureaucratic decision that bears no necessary relationship to business reality.

3 comments:

Anonymous said...

Hey, what's with the 'wretched Registry clerk' Mr Farwell ? If you want valves, then you should know what sort of valves you want, and what class they are in.

A very valid discussion point otherwise. Is there anyone from OHIM reading this (we know you're out there !) who could explain their rationale.

Jeremy said...

Although I'm sure that Keith can defend himself, I suspect that his use of the word "wretched", in relation to Registry employees, is as a description of their predicament and not of their person.

Anonymous said...

Communication No 4/03 of the President of OHIM seems to set out the OHIM position, but to call it a 'rationale', as distinct from a 'declaration', is debateable.

It strikes me that the only identifiable advantage of the OHIM approach is in terms of the applicant/proprietor being better able to limit or restrict his goods at a later stage. If you assume that a class heading equals all goods of the class then you have more scope to reduce or limit such goods.

This advantage to the proprietor however needs balancing against the inconvenience faced by third parties who reasonably expect the specification to say exactly what is covered - and not to have to refer to the Nice Classification for clarification.

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