The IPKat's venerable friend Richard Ashmead -- a man who has done more than pretty well anyone else on the planet to draw attention to problems caused by class headings in trade mark applications and to suggest sensible solutions to them -- has not forgotten the fact that the IP TRANSLATOR trade mark application by the Chartered Institute of Patent Attorneys (CIPA) [on which see the myriad Katposts listed here] remains unresolved. The Kat has now received the following, which brings him up to speed:
You will no doubt recall that the ruling of the Court of Justice of the European Union (CJEU) in June 2012 in Case C-307/10 Chartered Institute of Patent Attorneys [noted by the IPKat here] was sought by Geoffrey Hobbs QC sitting as the Appointed Person in the appeal by CIPA against the refusal of the UK Intellectual Property Office (IPO) of the IP TRANSLATOR application. That ruling in effect reopened the stayed UK appeal and a further, or I suppose re-convened, hearing took place before the Appointed Person on 10 January 2013 with representation by Michael Edenborough QC for CIPA and Nathan Abraham of and for the UK IPO. The main issue before the Appointed Person was whether the answers given by the CJEU to the Appointed Person’s reference questions can be applied to decide CIPA’s appeal, or whether a re-reference to the CJEU may be required.
We have no indication yet when the Appointed Person will deliver his decision [the Kat doesn't know when it's coming, but he daily checks this page on the IPO website for signs of its arrival], but in view of the widespread confusion the CJEU’s judgment has caused, notably in the introduction in its third reference answer of questions of intended, rather than indicated, goods/services scope in applications, I suspect that that the Appointed Person’s decision will be of considerable interest to IPKat readers. One then to watch out for.
In the meantime you will also be aware of the UK IPO’s call for comment on the European Commission's new Directive and Community Trade Mark Regulation (CTMR) proposals by 30 April 2013 (just email your comments to EuropeanTradeMarkReform@ipo.gov.uk) [whoops, the IPKat seems to have overlooked it -- or was it a very quiet call for comment ...?]. The CTMR proposal includes at new Art 28 provision for owners of pre-June 2013 class heading CTMs to declare that their intention on filing was to mean more than the literal meaning of the class heading wording, and to request the addition of wording in accordance with that intention from the Nice alphabetical list for that class, whether within the class heading wording or not. This new Art 28 wording is not in the Commission's Directive proposal, just that for the CTMR.
This proposal looks to me to offer the prospect of broadening of registration scope (eg adding “computer programs” to a class 9 heading from a time when it did not include those literally or by genus/species significance). Can they do that in the face of TRIPS, the Paris Convention etc? What about search advice given and accepted on the basis that “means what it says” was always correct in EU law. Please also see my April 2012 IPKat piece here on the quite widely proposed matter of compensation to EU trade mark owners for perceived losses of anticipated scope should the CJEU in fact find for “means what it says”.