Friday, 3 May 2013
The history of this trade mark application has been extensively covered by this weblog over the years (you can get a long list of IP TRANSLATOR Katposts by clicking here). Suffice it to say that, in his decision yesterday (not yet on the UK Intellectual Property Office website, but you can read it in full here), Geoffrey Hobbs QC applied the ruling of the Court of Justice of the European Union (CJEU) in Case C-307/10. On doing so, he allowed CIPA's appeal, setting aside the original decision and remitting it for further examination. CIPA was ordered to confirm that the words of identification of the services for which it sought registration do not seek to cover anything that does not fall within the natural and ordinary meaning of those words as written and recorded in the application, and the Registrar was told to consider whether any part of the verbal formula describing those services fails to identify those services with the requisite degree of clarity and precision.
That's the bottom line. However, there's plenty of interesting material in the 17-page decision for the trade mark connoisseur to ponder. For one thing, Geoffrey Hobbs QC took issue with the approach taken by the General Court in Case T-66/11 Present Service v OHIM, Pont-Nou (babilu/babidu), as to how ambiguities caused by the use of class headings as descriptors can be resolved by the use of 'off-the register' explanations and practice statements. He also saw no reason to make a further reference to the CJEU for any more preliminary guidance.
This weblog hopes to bring a fuller analysis and discussion of this decision soon.
A katpat to the ever-helpful Michael Edenborough QC, who appeared on behalf of the successful appellant.