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Thursday, 17 January 2013

Why not everyone is happy to tick the box

Désirée Fields' guest piece "Classes, Clarity and Confusion: the legacy of IP TRANSLATOR", hosted yesterday by the IPKat herehas 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.

Why OHIM is so keen to encourage applicants to claim the whole class in the first place -- now OHIM have even got a “tick the box” option for it on their e-filing system -- is not for the convenience of the applicant, or for any other trade mark owner; it is for OHIM’s convenience, because the more OHIM can persuade everyone to draft specification from a “pick list” and even better to persuade everyone to “pick the whole list”, the less OHIM’s workload: both in terms of translating CTM specifications into all the languages required by EU legislation, and in the time taken to interpret them: for example, if every application filed always covers all the alphabetical list, this means that in oppositions more goods and services of both parties will have to be held identical; this is a great time-saver for the OHIM official who has to write the opposition decision; it is easy to say that the goods/services are identical, and then he needs only spend time on the comparison of the marks. Such a great time saver it seems that OHIM will go to all sorts of lengths (literally, given the lengths of the specifications which the tick the whole class box engenders, and is it not literally a double-pun in view of what the Court said about literal approach v official policy approach?) to keep on ensuring that applicants keep on claiming the whole class. It is unbelievable to the attorneys in the rest of the world why OHIM would do this. I had the task of explaining to a Japanese attorney this whole mess earlier this week, and she was aghast. Does OHIM not realise how much this type of practice makes them a laughing-stock? No doubt, if the Max Planck recommendation of needing an intention to use is adopted, OHIM will have a “tick that you have an intention to use the whole class box” too".
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. 
Lunar landscape? No,
it's just quinoa
 
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.

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".
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.

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?

1 comment:

Hastings Guise said...

A further issue that comes up -- which I was discussing this morning with a colleague -- is that if you want to use the Class Heading in the traditional way together with other terms ("clothing, headgear and footwear; nightwear; swimwear." for example) because it covers your client's scope of goods well, OHIM will then assume that want to cover the alphabetical list. If you don't tick the box -- you then get an Office Action asking you to confirm whether the box should have been ticked and giving a two month reply period. Thereby delaying the application process and adding costs for no good reason.

I'm with Clare on this -- OHIM seem determined to have an "All Goods in Class X" approach by stealth, to the detriment of register clarity and ease of use for applicants.

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