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Monday, 12 August 2013

Big Dream and the Sleep of Reason: more groans for IP TRANSLATOR

Watched by the IPKat, an OHIM
Opposition Division member
despairs of ever applying IP
TRANSLATOR sensibly ...
Readers with little interest in Community trade mark (CTM) law (and there are many) probably give an inward groan when this weblog dedicates space to this subject, and an outward groan when the space is dedicated to some nerdy, technical topic that scarcely causes the blood to race and the spirits to rise -- like the specification in a CTM application of the goods or services for which registration of a mark is sought or obtained.  If you are one such groaner, prepare to groan your worst, for here's some fresh news of the aftermath of the ill-thought-out ruling of the Court of Justice in the European Union (CJEU) in Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR case (on which see earlier Katposts here, here, here ... are you still awake?)  The next instalment of the Case of the Problem that Refuses to Be Solved is taken up by Katfriend Keith Gymer (Page Hargrave), who writes as follows:
As is now well known, the CJEU ruling in IP TRANSLATOR stated that:
An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered (emphasis and link added).
Accordingly the Office for Harmonisation in the Internal Market (OHIM) now requires new applicants to answer that question by ticking a box if they do want to cover all the Nice alphabetical list for a given class (though most applicants -- and dare I say most attorneys -- probably have no idea of the actual scope of goods/services which may be included in the alphabetical lists), otherwise a description of goods/services is taken to mean just what it says. That at least means that new applications do actually include the full listings at the time of filing.

More dubiously, where applications were filed before the IP TRANSLATOR decision and used only the class headings, OHIM now states that it considers that the applicants' [unexpressed] intention was to cover the whole alphabetical list in the relevant class, unless the applicant informs OHIM otherwise. This situation arises in opposition proceedings against such applications, and the listings of goods and services for such opposed applications which originally only specified class headings (which are supposed to mean what they say) will now suddenly spawn complete Nice alphabetical listings, long after filing and after publication.

The consequences arise that an opposition against a CTM application, which originally specified only a class heading, and which opposition is based on a non-CTM registration also including wording of the same class heading, can now be partially refused because -- lo and behold -- the alphabetical list added to the CTM application, on OHIM's presumption, is deemed to include goods/services which OHIM's Opposition Division now considers not to be similar to the class heading. This is surely absurd. OHIM's presumption and post-filing, post-publication addition of the alphabetical listing to a CTM application must surely amount to an impermissible extension of the original list of goods, contrary to Articles 43(1) and (2) of the Community Trade Mark Regulation.

As a real example of this absurdity in action I offer you this recent decision in Opposition B2015108 (DREAM/BigDream), where my client was the opponent and the opposition related to goods in Class 25. The contortions that the Opposition Division went through, in order to produce the nonsensical partial refusal in this case, are incredible. The goods which are maintained in the application were not in the original application; they were only introduced following OHIM's presumption, and were of no concern to the opponent -- and probably of no interest to the applicant either. The opponent, however, does not get costs, despite prevailing against the original goods, because the opposition is deemed not to have succeeded against the remaining goods, which were only introduced by OHIM.

By way of direct comparison, I also attach a copy of the earlier decision in Opposition B1725962 between the same parties, relating to exactly the same marks and the exactly the same originally specified goods, where the Opposition rightly succeeded in full.

Unsurprisingly, despite the evident doubts about the validity of OHIM's actions and the merits of the Opposition Division's acrobatic performance in the more recent case, our client is not interested in paying 800 euros for the privilege of challenging this artificial result. So I guess we will just have to wait for some better-funded party to take this nonsense up to the CJEU before OHIM reconsiders.
Old Groaners here, here and here
Sleep of reason here

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