For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Wednesday, 16 January 2013

Classes, clarity and confusion: the legacy of IP Translator

OHIM and the Court of Justice of the European
Union don't have a monopoly of devilry ...
Last week this Kat had a most enjoyable discussion with one of his colleagues concerning the current situation in which Europe's trade mark attorneys find themselves, now that the dust seems to be settling on the curious of the Court of Justice of the European Union in Case C-307/10 Chartered Institute of Patent Attorneys (better known as IP Translator).  Go on, be a devil, said the Kat, put something in writing and I'll post it on the blog.  Well, before the Kat's colleague could decide whether to be a devil or not, the piece which you can below was received from someone who had already decided on a bit of devilry -- Katfriend Désirée Fields (McDermott Will & Emery UK LLP). By coincidence, a number of the issues which were drawn to the Kat's attention last week appear in this piece too.  While one swallow does not make a summer, and even two trade mark practitioners who agree with one another do not constitute Europe-wide consensus, it would be good to know whether the view expressed here by Désirée does indeed reflect the experiences and thoughts of others.
"Clarity and precision -- or even more confusion? 
A few weeks ago I was having lunch with a fellow intellectual property enthusiast who currently has some ongoing disputes with a large international media conglomerate. She often needs to review new Community trade mark applications filed by this company in order to determine whether to take any action against them.  And, according to her, this is apparently by no means an easy task, following the (in)famous decision of the Court of Justice of the European Union in Case C-307/10 IP Translator [on which see Katposts here, here and here] and the subsequent changes which the Office for Harmonisation in the Internal Market (OHIM) made to its trade mark filing system whereby Community trade mark applicants must expressly indicate whether they intend to cover all the goods and services in a particular class or only some of them.  As my lunching companion pointed out, she likes to file oppositions against specific goods and services rather than “throwing in the kitchen sink”.  As a result, she had to wade through 25 pages of specification to tease out those goods and services relevant to her case. 
At the time of our lunch, I did not give this much though.  However, recently I have been a bit puzzled by the overwhelming amounts of paper that land on my desk whenever OHIM issues an L-SU01 communication notifying me of a later filed application that one of my clients may wish to oppose. To simplify my life, our paralegal tends to print out the details of the earlier Community trade mark application and the later filed application so that I can compare the two side by side. In the past, this usually amounted to three or four pages.  Recently, however, I am increasingly shocked to see that very frequently specifications of newly filed Community trade mark applications run to significantly more pages.  
I decided to investigate the matter. Logging into MyPage, I quickly discovered that the online filing system is precisely where the problem lies: When selecting a particular class, the field is pre-populated with the class headings.  The applicant is then asked to confirm whether it intends to cover all the goods or services in this particular category.  When the applicant checks the relevant box, a warning pops up 
Any previous indication of goods/services will be replaced by class heading of the selected class and all goods/services of the alphabetical list of this class.” 
Has the alphabetical list
made mugs of all of us?
Seconds later, the box is populated by a huge amount of terms, consisting of all the terms in the alphabetical list which is imported from EuroClass. From the point of view of third parties examining the Community trade marks register, the spelling out of the alphabetical list is in some ways very helpful: it is clear what goods and services are covered and therefore it makes it easier to assess whether a conflict exists on paper. From the point of view of trade mark advisers who do not operate on a fixed fee basis when carrying out clearance searches or assessing potential oppositions, could this be a potential goldmine of billable time?  If trade mark advisers are carrying out their duties diligently, they will still need to read through every item on the list to ensure that the applicant has indeed covered the entire spectrum of goods and services on the alphabetical list and has not deleted certain items. 
Teaching apparatus
to explain "clothing,
footwear, headgear"
 
More to the point, however, is it really necessary for OHIM to list the entire alphabetical list of goods and services even where an applicant intends to cover it in its entirety? Would it not be sufficient for a statement to appear under the class heading stating “This application includes the entire alphabetical list of goods/services in class X?”  This would certainly save hours of wading through lengthy specifications and probably a large amount of forests! 
The other issue with the application form is that it still allows scope for confusion.  If the applicant unchecks the box, it is left again with class headings.  However, because the applicant has not ticked the box stating that it wishes to cover everything in the class, the applicant is clearly not covering the detailed alphabetical list.  In certain classes, such as class 25, the scope of protection would probably still be clear if the applicant allows the class headings to stand without further clarification.  Everyone understands the meaning of clothing, footwear and headgear. In other classes, however, such as the ever-popular class 9, confusion is still likely to be rife.  Does anyone really understand what falls into the scope of teaching apparatus and instruments”? 
With respect to those businesses like the large international media conglomerate which has opted to include not just class headings but the entirety of the alphabetical list in its recent applications: Is it pure laziness or a cost saving measure to simply tick the box rather than to consider what it actually is for which protection is sought? Or does a media company really require protection for and use its trade mark in relation to chains for eyeglasses and contact lenses? [Another source of potential income for those trade mark advisers five years down the line?]".
Merpel is chuffed to see that Richard Ashmead's fabled passion for issues arising out of classification post-IP Translator is shared by some other members of the trade mark fraternity.

4 comments:

Barbara Cookson said...

Sadly I don't have the pleasure of all these lunching opportunities. However, I have followed IP translator and the original intention of OHIM was to simply allow the tick box principle of 'all goods in the class' but of course that wasn't going to be acceptable to WIPO and it wasn't consistent with the decision in any event which contains a very clear statement that there is a requirement of clarity and precision for identifying goods and services and it is both trademark offices and economic operators (applicants/clients) that have to understand the specification.

You can use the class heading without the accompanying list, where they are sufficiently clear and precise. The CJEU does not decision does not preclude it and OHIM are not likely to object. (For what it's worth, I think the the class 9 heading is fairly clear and precise).

The current OHIM solution which works well for computer programmers but badly for agents is where things have gone horribly wrong. The OHIM regulation doesn't require an intention to use and if applicants want maximum value for their Euro, there will always be some who tick boxes. I don't think OHIM should make it that easy. We should lobby for the form to be changed back, so as not to encourage these horrendously long specifications. If the applicant wants to the alphabetical list, let the man copy it in himself. With the lovely Euroclass tool there is no difficulty in assembling fully acceptable specifications.

In one case where my application had to be re-examined because of IP translator, the objection was withdrawn. It would be cynical of me to suggest that the examiner really didn't have the heart to go through the alphabetical list pointing out which were and which were not objectionable.

The only consolation is that in 5 years time there are going to be a lot of agents faced with non-use actions who have to delve through their own lengthy specifications and assert with clarity and precision how their actual use relates to the specification they so carelessly drafted.

Please OHIM don't make long specifications too easy.

It would also be interesting to know if OHIM has raised any objections to lack of clarity and precision in a specification of late, or is this only something that happens in South Korea.

Jeremy said...

Barbara -- but this wasn't one of my lunching opportunities ...!

Hastings Guise said...

I totally agree -- IP TRANSLATOR has left a real mess in terms of OHIM specifications.

I initially toyed with including the alphabetical list on occasions when it could be implied by means of a simple declaration.

However, following the OHIM changes -- where the alphabetical list is explicit and also excludes any bespoke wording -- my view is strongly that it is almost always better to draft your own specification instead. That way you can know that you are representing your client's business as accurately as possible and (hopefully) providing a bit of future-proofing as well.

Much better than relying on a list of fairly abritrary terms that have emerged from slow-burning treaty negotiations and inevitably lag behind commercial reality.

Anonymous said...

use of class headings and effectively all goods in a class is plain lazy and practitioners who do this should be ashamed in my view.
Part of your job is to tailor the specification to the precise commercial interests and likely future revenue streams. I would personally favour abolishing the class headings and requiring applicants to specify their interests- not to an anal US level of detail but avoiding the 'I want it all' approach. The huge majority of applicants will not get anywhere near most of the goods in an alphabetical list for a class. A dose of realism is needed but whilst stuck with IP TRANSLATOR won't be arriving any time soon.

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