Désirée Fields' guest piece "Classes, Clarity and Confusion: the legacy of IP TRANSLATOR", hosted yesterday by the IPKat here, has attracted a good deal of response. Apart from the comments posted below the original article, the IPKat has received today a couple of emailed observations which, with their authors' permission, he reproduces here.
First, katfriend and highly experienced trade mark attorney Claire Lazenby writes:
"OHIM cannot say in any of its specifications “This application includes the entire alphabetical list of goods/services in class X” because this would not be a list. It is because of OHIM’s obsession with needing a list that the whole mess of class headings began in the first place, because anyone who filed “ all goods in class xxx” would find that this was automatically transformed by OHIM into the class heading.Another katfriend, J A Kemp partner Ben Mooneapillay, adds:
"There is, I think, an assumption that ticking the relevant box on the OHIM application form means that all goods or services in the relevant class are covered. However, there is a subtle but potentially important distinction between "all goods/services in the class" and the goods/services appearing in the Nice alphabetical list. The alphabetical list is extensive, but it's not necessarily exhaustive.
In its decision the CJEU referred to goods/services appearing in the alphabetical list (perhaps assuming that the list is exhaustive) and it is this list that OHIM will reproduce on the application form if the relevant box is ticked but, if a particular product or service does not appear in the list, it will not find its way on to the application form (for example, "quinoa" does not appear in the alphabetical list). In practice, the alphabetical list probably covers almost everything (I haven't read it!); however, there may well be descriptions of products or services that do not appear in the list that may also be difficult to categorise as part of a broader term appearing in the alphabetical list.The Kat also had a nudge from Richard Ashmead to remind readers to read "OHIM’s box-ticking approach to class heading filings fails to tick all the right boxes" by Nabarro's Louise Gellman (here) -- which you can guess, from the title, is not hugely enthusiastic about the box-ticking exercise.
This is perhaps something that applicants need to be mindful of if choosing to rely on 'ticking the box', rather than specifying particular goods/services".
Merpel is not expecting paeans of praise, but she does wonder whether there are some trade mark practitioners out there who are happily ticking the boxes as often as necessary and who have no qualms about the quality, utility and efficacy of the system?