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Monday, 16 April 2012

Lost in IP Translator -- a trilogy of treatises: I

Oh where, oh where has IP TRANSLATOR gone? This fascinating case, otherwise known as Case C-307/10 Chartered Institute of Patent Attorneys, was referred to the Court of Justice of the European Union (CJEU) as long ago as 27 May 2010.  The Opinion of Advocate General Bot was delivered on 29 November last year. Kats and humans are now getting a little twitchy while they wait for a sighting of this case in the Curia diary here.


For the benefit of new readers, the problem at the heart of this action is this. The Chartered Institute of Patent Attorneys applied to register the words IP TRANSLATOR as a UK trade mark for the products in Class 41 of the Nice Classification, headed ‘Education; providing of training; entertainment; sporting and cultural activities’. What's the problem, you might wonder. Well, it's this: translation services are not mentioned in the heading 'education; providing of training; entertainment; sporting and cultural activities' -- but they are listed as a subheading. You can't register IP TRANSLATOR for translation services, since it's descriptive and probably non-distinctive too -- but if you are only applying to register it for 'education; providing of training; entertainment; sporting and cultural activities', who says you even want that mark for translation services?  The practice of Europe's trade mark granting establishments varies: some say an application to register the things described in the heading automatically includes all things listed in the unmentioned side-headings. Others say you only get what you ask for and, if you don't mention translation services your application to register a mark for other things won't be fouled up by the fact that those services happen to fall within the class for which you've sought to register the headings.


At this point, the IPKat's friend and well-seasoned IP practitioner Richard Ashmead dons his katsuit for this and the next two Mondays in order to give readers a deeper appreciation of the many issues that lie beneath this superficial introduction, not just in terms of office practice and professional advice to clients but also in terms of some wider legal and political implications. As Richard explains: 
IP TRANSLATOR consequences - part 1

Advocate-General Bot’s Opinion in IP TRANSLATOR has been with us for four months, with no word yet of a date for the CJEU’s judgment. A wait of 3-6 months seems to be thought of as a norm, so now seems a good time to give some thought, albeit speculative, to what happens next. While we do not know if, or to what degree, the Court will follow its AG’s Opinion, since it is widely viewed as cogent and reasonable it seems a good place to start. I will therefore assume that we shall get the following or thereabouts from the Court sometime soon:

  • A requirement for the identification of goods/services in applications to an EU-wide standard of clarity and precision in line with the seven Sieckmann mark-criteria, but tuned to the specifics of goods/services.
  • Confirmation that there is no legal magic making goods/services wordings of (or from) Nice class headings necessarily acceptable in applications, but nothing to stop their use in applications if they can be shown to have that Sieckmann-like clarity and precision [i.e. a trade mark can consist of a sign that is not capable of being perceived visually (such as a sound or an olfactory mark), as long as it can be represented graphically, particularly by means of images, lines or characters and if its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective].
  • Confirmation that Communication 4/03 [of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations] is not a legislative text, has no binding legal value, and anyway fails to provide the legal certainty required in applications for accurate determination of the substantive scope of protection sought.
  • Confirmation that 4/03’s “class-heading-covers-all” approach is not (and has not been) correct in EU law.
  • Confirmation (albeit implicit) that the alternative “means-what-it-says” approach is a useable abbreviation for compliance with a set of Sieckmann-like criteria for clarity and precision.
What happens next from that assumed point is a big target, so I propose for now just to look at some issues which have struck me as needing greater attention once we have the Court’s judgment. I will start this week by looking at the widely-discussed suggestions that broadening of the goods/services lists of CTM class heading registrations may be allowed as compensation for their owners' perceived loss of anticipated scope under “means-what-it-says”.

Next week I will look at how OHIM (and other EU IPOs) will have to examine lists of goods/services in applications (whether class headings or not) under a requirement for a Sieckmann-like standard of clarity and precision, and with that also look briefly at whether the AG's IP TRANSLATOR Opinion does or does not speak against the use of genus terms in applications, as suggested in some quarters.  Finally in two weeks time I will present some thoughts on the effects of OHIM’s Convergence Programme on the more disputatious aspects of the use of Nice class headings in applications.

Compensation to trade mark owners for perceived losses of anticipated scope

There must be many thousands of CTM registrations with lists of goods/services corresponding to Nice class headings granted when “class-heading-covers-all” was official practice under Presidential Communication No. 4/03 (text here). Once the CJEU confirms “means-what-it-says” as correct in law, those registrations will arguably have their full class scope reduced to that of the class heading wording construed as “means-what-it-says”, the argued loss being any goods/services within a class but not within the class heading  wording for that class ie “extra-class-heading-goods/services”. The question from there is whether owners of CTM class heading registrations should be allowed to amend their goods/services lists to include any “extra-class-heading-goods/services” they can specify to maintain the scope of protection they may have expected when they applied for registration.

This issue appears in the Max Planck Institute’s 2011 report to the Commission in terms that

“To the extent that this involves a change in law or practice, appropriate transitional rules should permit trade mark proprietors to adapt their specifications accordingly”

and there has been published comment in support of that from various professional and commercial bodies such as:

  • MARQUES in terms of the change materially curtailing the scope of protection that many registrants currently believe they have, and questioning whether it is fair that such protection should be removed retrospectively, and
  • ECTA advocating a transitional period for owners to amend their specification to clarify the scope of the rights. 
The converse view is that if “class-heading-covers-all” was at all relevant times incorrect in EU law, class heading registrations never did cover all goods/services in their listed classes, so amendment to include any “extra-class-heading-goods/services” would be a broadening and therefore impermissible. That converse view seems right to me, but I will expand a little.

I doubt that the Court will address this as it is not a reference question, so we would be looking at the Commission including such “top-up” provisions in its new Directive/CTM Regulation package (thought now possibly due for release in June after several earlier postponements). But can the Commission do that? Currently The Directive seems not to address the point, but Art. 48(1) CTMR does, saying simply that “The Community trade mark shall not be altered in the Register during the period of registration or on renewal thereof”. This is qualified in Art. 43 CTMR which allows restriction of the list of goods/services and certain other amendments, but specifically rules out extensions of goods/services. Can then the Commission put top-up provisions in the CTMR to override those Arts. 48(1) and 43 CTMR, or indeed require that in the new Directive?

My thoughts here keep coming back to the concept of “impermissible broadening” as an absolute preclusion in respect of granted IP rights -- but is there such a preclusion and, if so, where does it come from?  I have cast around for chapter-and-verse on the origins or currency of any general impermissibility of broadening, but with no real luck. Some useful research by Nick Boydell at Bird & Bird picked up a whole raft of CTM cases in which amendment of a mark, even a seemingly minor alteration, was refused so as not to cause prejudice to third parties. These included the Blueco Ltd (BLUEWATER) Case R 117/1998-1 where the following appears:

"In order to balance the applicant’s priority and other rights stemming from or acquired in connection with the filing date against the rights and legitimate expectations of third parties as regards the availability of signs, any changes affecting the representation of the mark after the filing of the application are allowed only in exceptional and limited circumstances."

CTM case comment on amendment of goods/services is sparse, but Nick did refer me to Ratiopharm Case R 6/2002-3 in which the Third Board of Appeal commented that

“... extension of the list of goods and services is prohibited in view of the effects of the length of trade mark protection and the priority of the right ....”

under the guiding principle of certainty in Community trade mark law. I also do not know exactly where this guiding principle comes from, but I like the sound of it. Might it be that the EU has specific international obligations precluding broadening provisions in a Directive or Regulation? Does anyone know? It looks then that this may be a matter of principle, and of reliance on predictability, legal certainty and coherence of lists of goods (as indeed for marks themselves), but does the IPKat have a reader who knows better?

Moving on from whether that sort of broadening can be permissible in law, the main justification I have heard for top-up provisions relies on the legal right of legitimate expectation, argued to mean that owners of CTM class heading registrations should be able to keep the level of protection they may have expected because of 4/03. The right of legitimate expectation exists to a degree in UK (eg in judicial review cases) but, I think, may be more developed in other parts of the EU. What though, in passing, of CTM owners which did not know of “class-heading-covers-all” or did not believe it to be correct in law? Does that count as an expectation? What too of right of legitimate expectation of third parties which have relied on previously published registration details under a belief that “means-what-it-says” was and is correct in law, despite 4/03?

I think that broadening of goods/services is, and will remain, impermissible, at least with the original registration’s priority, with the consequence that owners of CTM class heading registrations should not be able to amend their class heading registered goods by addition of the goods/service considered lost by the Court’s confirmation of “means-what-it-says”. Does anyone disagree?

One final question on the topic. I have read that OHIM introduced its “class-heading-covers-all” practice in 1996, when faced with a large number of early CTM applications reciting “All goods/services in class XX”, and that these were translated into the class XX heading without raising objection with the applicants. Does that mean that that initial raft of “All goods …..” applicants which had no say in the amendment to the class XX heading might in fact have a right to a top-up of “extra-class-heading-goods/services”?

To be continued ...

As I mentioned earlier I want to look next week at whether the Court’s IP TRANSATOR judgment may affect how OHIM and other EU IPOs will have to examine lists of goods/services in applications, and whether the AG in his IP TRANSLATOR Opinion does or does not speak against the use of genus terms in application.

2 comments:

Kharol said...

sometimes I believe this type of academic discussions could easily be settled by an adjustment of the fee scheme. When the applicant has to pay a fee for each and any distinct product type covered by the application a "cover complete class" would just set them back a couple of millions and they might switch on their minds and limit coverage to what they really manufacturer, leaving the trademark space less cluttered, and e.g. protecting a manufacturer of egg cups from harassment by computer manufacturers with deep pockets..

Jeremy said...

Thanks, Kharol -- but that doesn't solve the problem of the very large number of trade marks already granted at CTM and national/regional level which, as a result of the ruling, will either have more or less scope than the proprietor was bargaining for when he applied in the first place. You can't "switch on your mind" to a decision you have made in the past.

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