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Monday, 23 April 2012

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

Last week the IPKat asked where IP TRANSLATOR has 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) back in 27 May 2010.  The Opinion of Advocate General Bot was delivered on 29 November last year. Kats and humans have been 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.


Last week the IPKat's friend, IP practitioner Richard Ashmead, launched the first in a mini-series of three articles which seek 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.  Last week Richard considered the possible consequences of the Court's likely ruling.  This week he explains 

IP TRANSLATOR consequences - part 2 
Last week I put together some thoughts on the widely-discussed proposal to provide compensation for Community trade mark (CTM) registration owners for perceived loss of anticipated scope if OHIM moves to a “means-what-it-says” approach. I assumed then, and will continue today, that the Court’s IP TRANSLATOR judgment will largely follow the November 2011 Opinion of its Advocate-General. Precisely what this means is spelled out in full in my previous post.
This week I want to look at some other legal and practice issues which may need to be addressed following the IP TRANSLATOR judgment. First, will a specific Court requirement for an EU-wide standard of clarity and precision in applications affect the way OHIM and other EU intellectual property offices (IPOs) examine lists of goods/services in applications (whether class headings or not). Secondly does the AG in his IP TRANSLATOR Opinion speak against the use of genus terms in applications?
Examination of goods/services in applications 
I was struck when thinking about AG Bot’s support for a Sieckmann-like standard of clarity and precision in the identification of goods/services scope [explained last week] that I’d not really noticed before that the current CTM Implementing Regulaton (IR), Rule 2, and UK Trade Mark Rules, Rule 8, each require goods/services to be described clearly enough (i) to indicate their nature and (ii) to allow them to be classified in the classes of the Nice Classification. The move from clarity of the nature of the goods through “clarity and precision” and then on to a set of Sieckmann-derived criteria does not look like a sea change, more an enhancement or clarification of an existing requirement, so it should not cause too many problems. Or might it?
Both UK IPO and OHIM deal with the clarity etc requirements of these Rules in the classification parts of their manuals, UK IPO in the “Classification Guide” part of its Manual of Practice and OHIM in the newly revised “Part B.3: Classification” of its Manual. Is there then a presumption that, if a term is classifiable (or has been classified), it must be clear and precise of scope? If so, how does that square with the possibility of an applicant’s goods/services description being clearly and precisely defined for scope, but not be Nice-compliant, or vice versa? Bear in mind too that the IP TRANSLATOR reference questions are not really to do with classification, but focus on the meaning of lists of goods/services whether they are classifiable or not. 
That begins to look to me that all lists of goods/services (not just class headings or class-heading-derived) have to overcome two related but different hurdles, and if that is so, do all the terms the Nice Alphabetical lists and Euroace do that? The answer must be “no” for some class heading terms like machines in class 7 which are presumably regarded as de facto classifiable (are they?) but not sufficiently clear to define scope. Or is it that a broad term like machines is both unclear of scope and (therefore) unclassifiable? Should the EU IPOs then be revising their approaches by first ensuring clarity of scope and then checking for classification? I think probably they should, but in practice the Nice Alphabetical and Euroace collections are a practical background for examiners looking at goods/services for compliance with CTMIR Rule 2 and UK TMR Rule 8 - if an assumption can be made that the terms contained in these collections have been accepted as both clear of scope and correctly classified. 
My feeling is that a change to goods/services examination is necessary, but perhaps mainly in approach rather than substance, with Offices’ guidance and examination approaches distinguishing clarity etc of scope from the ability to classify, not least to ensure that applicants are not led into amendments for one sort of clarity which has an unintended effect on the other.
Problems are likely to be in broader terms. It seems already to be accepted that the broader terms in class headings, probably all terms in class headings, need to be reviewed for clarity etc of scope, which suggests that other similarly broad terms in the Nice Alphabetical lists etc may need the same level of reconsideration. I suspect that most already accepted single product terms (for both goods and services) are likely to have been considered adequately for clarity etc of scope and classification, so it is the middle range of broader pre-classified terms which need care. Let me then take yet a further Aunt Sally approach and offer the following prediction for discussion and/or criticism: 
• A two-stage IPO examination of goods/services will be required first for clarity and precision of scope, and then for Nice compliance  
• Single product terms already in the Nice Alphabetical listings and Euroace will be approved as acceptable for scope and classification, unless alarm bells ring,  
• New terms, alarm bell existing single product terms, and broader scope terms in the Nice Alphabetical and/or Euroace listings will be reconsidered by the examiner under the two stage approach  
• All Nice class heading terms will be reviewed for a new policy decision on clarity and precision for scope and classification. 
This is not solely an OHIM-specific issue as most EU IPOs currently accept most class heading wordings whether they agree with 4/03 and “class-heading-covers-all” or not. Is this a real issue, then, or one in the realm of angels dancing on the heads of pins? IPKat readers’ thoughts and comments will be most welcome, but in the meantime on to genus terms and individual terms.
Use of genus terms and lists of individual terms 
Both the UK IPO and OHIM have examination concerns on broader goods/services terms, notably when they approach points of vagueness, but just where clarity and precision stop and vagueness starts is not easy to determine. It might be thought that a broad term covering goods or services in multiple classes could be vague, but neither office currently takes that view as such as they generally do not object if there are such goods/services in the class(es) designated by the applicant. 
Piccie from wpclipart.com
The AG sees an issue here but I am not yet clear exactly how. He comments on the need to distinguish “bougies d’├ęclairage” (lighting candles in class 4) from “bougies d’allumage” (spark plugs in class 7), implying that “bougies” as a term is not clear and precise enough, whereas current OHIM and UK IPO practice seems to allow an English term like “bougies” (ie one including examples falling in two classes – like guttering perhaps) as acceptable in either class or both. 
The problem, I think, is that when a term is sufficiently broad that you really cannot tell what it covers -- “machines” in class 7 and ““electronic and electric apparatus” in class 9 being commonly mentioned ones -- so we have some genus terms which are clear and precise and some which are not, the latter generally increasing with breadth. 
The transition point between precision/clarity on the one hand, and vagueness on the other, looks as though it needs some thought, but my concern for now is to look at published comments I have seen that the AG is against the use of genus terms, and that lists of all individual species terms will be needed for clarity and precision of scope. 
AG Bot is against a requirement to specify each individual variety of the goods/services concerned as unreasonably limiting for owners and further agrees that some of the general indications in Nice class headings, eg ‘soaps’ or ‘cutlery’ in the class 3 and 8 headings are sufficiently clear and precise. So once again so some genus terms are clear and precise and some are not, but to be acceptable under CTMIR Rule 2 and UK TMR Rule 8 they must satisfy the requirements of sufficient clarity and precision to enable the competent authorities and economic operators to determine accurately the scope of the protection conferred by the trade mark” either by using, in the AG’s words: 
• a specific list of each of the goods and services for which the applicant seeks protection, or 
• wording to identify 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. 
The former looks relatively straightforward, but does the latter raise problems for some genus terms, perhaps through the reference to “basic” goods/services? I do not think so, not least because of the AG’s acceptance of genus terms such as ‘soaps’ or ‘cutlery’. On top of that I have to say that I cannot right now see how Offices can formulate guidance for examiners or users on whether a particular broad genus term is or is not acceptable. What I would suggest though quite strongly is for applicants and practitioners not generally to desist from preparing lists of goods/services for filing using a structure of “genus term including species; species term”, for example “cosmetics; eye liners” or “articles of clothing; shirts”. Better to keep that option open at least until practices become clearer. 
To be continued ... 
Next week I propose to look just once more at class headings and the approach to them in OHIM’s Convergence Programme, and then leave to stage to others - unless we have been overtaken by the Court! The Court’s judicial calendar, showing hearing appointments about a month ahead, can be found here.

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