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Tuesday, 19 June 2012

Where to place the movable goalposts? The IP TRANSLATOR ruling

This afternoon, while the Kats were all busily engaged in putting the world to rights, the Court of Justice of the European Union (CJEU) was -- unusually, some might say -- doing the same, by clarifying the legal position regarding the manner in which trade mark applicants in Europe specify the goods or services for which they seek registration of their marks.  Although some uncertainties are left hanging in the air, today's ruling in Case C-307/10 Chartered Institute of Patent Attorneys (alias IP TRANSLATOR) does go some way to tidy things up.  Even though this ruling might seem to some like a curiously recondite footnote to a matter of mainly administrative interest, Curia took the step of putting out a media release on it, suggesting that it might be as important as the IPKat, the Chartered Institute of Patent Attorneys (represented by the excellent Michael Edenborough QC) and Richard Ashmead think it is. The media release reads, in relevant part, as follows:
"The Court clarifies the requirements for the identification of the goods and services for which the protection of a trade mark is sought

Those goods and services must be identified by the applicant with sufficient clarity and precision to allow the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark

The two essential elements of the registration of a trade mark are, on the one hand, the sign and, on the other, the goods and services which that sign is to designate. Those elements together allow the precise subject and the extent of the protection conferred by the registered trade mark on its proprietor to be defined.

Having identified in its case-law the conditions which a sign must fulfil in order to constitute a trade mark, the Court turns to consider, in the present case, the requirements for the identification of goods or services for which the protection of a trade mark is sought. This question is of particular importance when national trade mark offices and OHIM (the Community trade Mark Office) develop divergent practices leading to variable conditions for registration, contrary to the objectives pursued by the Trade Mark Directive.

At international level, trade mark law is governed by the Paris Convention for the Protection of Industrial Property. That convention served as a basis for the adoption of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. Since 1 January 2002 the Nice Classification has contained 34 classes of products and 11 classes of services. Each class is designated by one or more general indications, commonly called ‘class headings’, which indicate in a general manner the fields to which the goods and services in principle belong. The alphabetical list of goods and services contains approximately 12,000 entries.

... [T]he Chartered Institute of Patent Attorneys (CIPA) applied to register the designation ‘IP TRANSLATOR’ as a national trade mark. To identify the services covered by that registration CIPA used the general terms of the heading of a class of the Nice Classification, that is to say, ‘Education; providing of training; entertainment; sporting and cultural activities’.

The Registrar of Trade Marks refused that application, ...  The Registrar interpreted the application, taken overall, in accordance with a Communication from OHIM, and concluded that it covered not only services of the kind specified by CIPA, but also every other service falling within that class of the Nice Classification, including translation services. Accordingly, for these latter services the designation IP TRANSLATOR lacked distinctive character and was descriptive in nature. Moreover, there was no evidence that the word sign IP TRANSLATOR had acquired a distinctive character through use in relation to translation services prior to the date of the application for registration. There was also no request by CIPA for such services to be excluded from its trade mark application.

CIPA appealed ..., contending that its application for registration did not specify, and therefore did not cover, translation services. For that reason, it submitted, the Registrar’s objections to registration were misconceived and CIPA’s application for registration had been wrongly refused.

The High Court of Justice, hearing the case, has asked the Court of Justice to clarify the requirement of clarity and precision for the identification of the goods and services for which the protection of the trade mark is sought and whether it is possible to use, for that purpose, the general indications of the class headings of the Nice Classification.

In today's judgment, the Court emphasises, first, that the Trade Mark Directive must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought [says the IPKat: this statement should be uncontroversial -- except that it is only part of the story when it comes to determining the extent of protection conferred. Since registration confers protection in certain circumstances in respect of not only those goods or services but also to goods and services similar to them, the identification effectively establishes a set of movable goalposts, the extent to which they can be moved being defined by CJEU case law: eg, the more similar two marks are, the less similar need goods or services be before no likelihood of confusion can be said to exist -- but that's another story].

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks. On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors [Merpel loves this bit about clarity and precision: she has been wondering how easily actual and potential competitor can decipher sonograms and some of the other more esoteric means of recording so-called non-traditional marks], and thus to obtain relevant information about the rights of third parties.

Second, the Court holds that the directive does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought [Absolutely true: the Kat has looked, and there is no preclusion whatsoever]. However, such identification must be sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought. In that connection, the Court observes that some of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise, while others are too general and cover goods or services which are too varied to be compatible with the trade mark’s function as an indication of origin. Accordingly, it is for the competent authorities to make an assessment on a case-by-case basis, according to the goods or services for which the applicant seeks the protection conferred by a trade mark, in order to determine whether those indications meet the requirements of clarity and precision [Within the context of this reference to the CJEU, it's difficult to see what else the court could do but leave it to competent national authorities to make their own assessments, even though this will inevitably leave scope for commercially undesirable inconsistency as between national offices].
One basket for all eggs?
 Finally, the Court points out that an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services [writing on Class 46, Niamh Hall has already asked how precisely one is to specify in an application that it is intended to cover all the goods or services in a particular class]. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

Thus, it is for the referring court to determine whether, when it used all the general indications of the heading of a class of the Nice Classification, CIPA had specified in its application whether or not it covered all the services in that class and, in particular, whether or not its application was intended to cover translation services".
The media release does not mention the objection of OHIM that this reference was inadmissible, being an artificial case that was cobbled together in order to get an answer on a question for which, in the case concerned, there was no practical outcome. Said the Court, at paras32 to 33, after stating that questions of EU law enjoy a presumption of relevance:
"The Court may refuse to rule on a question referred by a national court only where it is quite obvious that the interpretation of EU law that is sought is unrelated to the actual facts of the main action or its purpose, where the problem is hypothetical, or where the Court does not have before it the factual or legal material necessary to give a useful answer to the questions submitted to it. 
However, that is not so in the present case. It is clear that the application for registration of the trade mark was actually lodged and that the Registrar rejected it, even if he departed from his usual practice".
In any event, there has been quite a tradition of fake cases being referred to the CJEU for rulings on trade mark matters, usually from the Netherlands, Merpel recalls.

The issue of what happens now, in respect of marks already granted, oppositions filed and applications in the pipeline, where national offices have assumed automatically that the designation of a class heading covers everything within in, looks as though it is still open for discussion.

This weblog will return to this case soon, after we've all had a chance to read the decision carefully and give it the benefit of some careful thought.

Advocate General Bot's Opinion here, with Kat comment here.
Richard Ashmead's outstanding trilogy of pieces on the issues raised in IP TRANSLATOR can be read here, here and here.

9 comments:

Kate Szell said...

Dear Kats,

I think you are being too kind to the CJ in saying that it has clarified anything. Surely it has just made the position worse? It has said that it is up to the national court to decide the issue ("Thus, in the case in the main proceedings, it is for the referring court to determine whether, when it used all the general indications of the heading of Class 41 of the Nice Classification, CIPA specified in its application whether or not it covered all the services in that class and, in particular, whether or not its application was intended to cover translation services.") which effectively means that the question has not been answered. Not content with that the court has thrown in the possibility of registrations containing the class heading being invalid. Paragraph 62 of the judgement states "An application for registration which does not make it possible to establish whether, by using a particular class heading of the Nice Classification, the applicant intends to cover all or only some of the goods in that class cannot be considered sufficiently clear and precise."

In my humble opinion, this decision is a disgrace. Member States' money deserves to be put to better use.

Anonymous said...

Except that it could have ruled that the coverage for the class heading was clearly coverage for all goods in the class. Which it did not - it stated that the applicant must say it wishes to cover all items in the class which, necessarily, means that mere mention of the class heading is not enough of itself.

Kate Szell said...

Dear Anonymous,

It did, indeed, say that the applicant must specify if it wishes to cover all items. However, if that means that simply covering all items does not give total coverage for the class, why did it also say that it was up to the referring court to decide if using the heading covers all the services? And this is to be done, it seems, by reference to the applicant's "intention". Madness.

Peter Smith said...

Paragraph 54 of the judgment observes that some of the general indications in the class headings "are too general and cover goods or services which are too variable to be compatible with the trade mark’s function as an indication of origin."

Does this imply a return to the old UK system where a broad specification in, say, Class 7 or Class 9 had to be justified before the Registry would accept it? I am in favour of narrow specifications for the sake of third parties but this seems to leave a horrible doubt over the status of existing registrations. Can we expect a rush of sports goods manufacturers bringing out decorations for Christmas trees?

Aaron said...

In addition to the above, you might also note the requirement that the specification is SELF CONTAINED - thus ruling out OHIMs entire basis for their practice.

Of course loose specifications are invalid - the interesting part being how it is remedied. If you amend the specification as a result of the filing of an application for a declaration of invalidity then does the action fail? - it should, surely.

The remaining question will be how the authorities deal with the point that an applicant could have indicated that they wanted to cover all goods in the class by way of covering the class heading, knowing the existence at that time of the practice and filing in accordance with that practice. Is it then just a matter of clarity (allowing the specification to be recast entirely) OR does it engage the rules about not extending a specification... ? OHIM.. it's over to you!

Let's also see how long it takes for OHIM's taxonomy to be challenged..

Aaron said...

Kate - it said that because whether the class heading covers all possible goods/services in the class is a matter of fact and cannot be adjudged in the context of ECJ proceedings.

Hastings Guise said...

Not a good decision. If the final part is meaningful at all, it seems to me that it must mean that whole Class specifications are acceptable provided you include the Class heading and wording such as ", including all goods in the Class".

Since this is going to be an easier option than arguing with the registry about clarity of specific terms, it could push applicant's towards wide generic filings thus increasing the likelihood of disputes.

It's also not clear to me how this part of the ruling squares with Praktiker -- "Business administration etc etc including all services in Class 35" would seem to comply with IP TRANSLATOR but flies in the face of Praktiker by including all retail services by implication.

Aaron said...

Rule 1(c) CTMIR would preclude those words being acceptable. The Praktiker fudge has been used for a while - i.e. class heading in class 35 to cover ALL retail services + use of Praktiker compliant description limited by goods of interest.

Suspect answer will be if you DONT say all goods you'll get what you put, if you DO say all goods you'll get an objection and a deadline to amend the specification - thus agents who have hazy instructions file for all goods and then use the deadline to perfect the specification. We'll still get wide specifications, but it will be easier to read them and clear marks since at least items will not be latent.

Hastings Guise said...

OHIM have just published their guidance on this.

http://oami.europa.eu/ows/rw/news/item2430.en.do

Basically, for existing and pending marks the rule will be that a Class heading is deemed to cover all goods/services unless the applicant or registrant has indicated otherwise. So -- status quo.

For new applications, the guidance says the Class heading will be deemed to cover all goods/services provided you make explicit that this is the intention. The guidance note seems to suggest that general Class heading plus 'all goods' wording will be an alternative to more specific lists.

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