From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 17 February 2014

512 Characters in Search of Semi-Colonic Cleansing

He could tell from her tears that she had
been filing Community trade marks again ...
Kats are quite used to seeing grown humans cry. If the latter would only mew a bit, they might attract some feline sympathy -- but human tears don't add up to much in the world of Kats, hardened as they are to the realities of life and the unforgiving world of Tennyson's nature red in tooth and claw.  Having said that, the Kats can muster a considerable quantity of sympathy for IP professionals who are compelled, for their living, to deal with some of the national and international institutions that exist, ostensibly to grant and administer IP rights but also, as many currently feel, to place stumbling-blocks, trip-wires and sundry other obstacles in the path of those who depend on them.

Here's an example of a cri de coeur [warning: this is just the first of a number of French terms deliberately used in this blog post, for reasons that will become apparent] from a seasoned IP practitioner who learned his craft in the days before the internet, when thing were a little slower but common sense had not yet been entirely replaced by what some might consider the collective wisdom of headless chickens.  He writes:
Following on from your report of Barbara Cookson’s initial observations (with which I would certainly concur) about some of the various problems with the new online services of the Office for Harmonisation in the Internal Market (OHIM), I would like to add my own particular expression of frustration at the operation of the new OHIM online filing system -- specifically in relation to the handling of descriptions of goods and services.

Why does OHIM feel the need to be prescriptive about descriptions of goods and services? Why won't they just leave it to the applicants?

First, OHIM took it upon itself to presume that Class headings should be deemed to include all goods in the class. In Case C-307/10 IP TRANSLATOR, the Court of Justice of the European Union (CJEU) told them they got it wrong (and it's good to read that the US Trademark Trial and Appeal Board has followed that view recently in the FIAT 500 case, here). The logical change then should surely have been simply to tell applicants that descriptions are taken to "mean what they say” and that, therefore, applicants should "say what they mean” - i.e. specifically describe their intended goods and services.

Why not try a new scheme for
Upper Class, Middle Class
and Lower Class Headings?
But no, OHIM’s misconceived response was to offer applicants a lazy, "tickbox” option to insert everything from the Nice alphabetical lists for each selected class, regardless of the relevance of most items on such lists to an applicant’s real business, thereby ensuring that the OHIM Register is now cluttered with thousands of registrations with descriptions of absurd length and covering vast ranges of goods and services, the majority of which are assuredly irrelevant to the businesses of the respective registrants. And they made it more absurd still, as the IPKat reported last year, by going on to spuriously “deem” any prior application which had included a class heading to supposedly then include everything on the Nice list for that class. This led to the OHIM Opposition Divisions being obliged to contrive wholly artificial decisions -- as reported in that blogpost -- whereby an application for a class heading, opposed by a similar mark (but not a Community trade mark) also covering the class heading, could be bizarrely deemed to survive for a few selected goods on the Nice list for that class, when those goods had never appeared in the original application, had never been published as deemed additions to the application, and most probably were of no interest to either applicant or opponent anyway.

One could have hoped that OHIM might have made the right decision NOT to impose its own prescriptions on class descriptions a third time around.

Unfortunately, as many users of the new online filing system will have found. OHIM’s latest prescription is to impose a character limit of 512 characters between semicolons in a class description. More than Twitter, I grant you, and perhaps OHIM managers were feeling embarrassed at the nonsensically long (and mostly irrelevant) descriptions of goods and services which followed the “tickbox” fiasco, but imposing an artificial limit is just another misconceived “solution” to a non-existent problem, in my view.

I offer the following live example of the absurdity of this system in real action.

Following the CJEU's ruling in Case C-418/02 Praktiker Bau, for Class 35 retail services, for example, it is standard practice to list "the goods or types of goods to which those services relate”, when specifying such services. If applicants retail a wide range of products, the “retail services relating to …” list can get very long, and would often easily run over 512 characters, in my experience.

However, in a recent application for one of my clients, I actually had the following list of retail services in the first language (ENGLISH) between two semicolons in the application:
"retail store services, available through catalogues and via a global computer network, featuring prints and publications, software programs and recordings of text and multimedia presentations relating to international business, to policy development, self-regulatory rules, codes, and guidelines for business and international trade, and to alternative dispute resolution;”
Did you count them? There are only 371 characters in that relatively short list for retail services, so that didn’t hit OHIM’s artificially imposed limit, and so what am I complaining about?

The catch is that I also wanted to file the applicant’s own translation of the descriptions of goods and services in the second language -- in this case, in French:
"services de commerce de détail, disponibles dans des catalogues et via un réseau informatique mondial, et proposant des imprimés et des publications, des logiciels informatiques et des enregistrements des présentations de textes et de multimédia en rapport avec le commerce international et des affaires, du développement de la politique générale, des dispositions d'autorégulation, des codes, des lignes directrices pour le commerce international et les affaires, et des modes alternatifs de règlements des différends;”
And there are 518 characters there. So OHIM’s prescriptive system refused to allow me to enter that list.

Here’s the solution I adopted (before penning a complaint myself to OHIM directly):
At last, a solution!
"services de commerce de détail, THIS; COLON IS ONLY INSERTED BECAUSE OHIM ONLINE FILING SYSTEM STUPIDLY WONT ALLOW MORE THAN FIVE HUNDRED TWELVE CHARACTERS BETWEEN COLONS; ALL THIS CAPITALISED ENGLISH TEXT IS ONLY TO EXPLAIN THAT AND SO CAN BE; REMOVED disponibles dans des catalogues et via un réseau informatique mondial, et proposant des imprimés et des publications, des logiciels informatiques et des enregistrements des présentations de textes et de multimédia en rapport avec le commerce international et des affaires, du développement de la politique générale, des dispositions d'autorégulation, des codes, des lignes directrices pour le commerce international et les affaires, et des modes alternatifs de règlements des différends;”
That’s how it appeared online for a while before an intelligent human intervened, and took the sensible step as advised.

However, in a telephonic response to my complaint from a very polite and charming young man at OHIM, it was explained to me that OHIM did not approve of my solution (!) and that the Powers that Be at OHIM had apparently considered a number of similar complaints, but had determined that the 512 character limit should continue to be imposed regardless.

Now what might OHIM’s preferred solution have been, you might ask?

Notwithstanding that my original first language ENGLISH description was less than 512 characters, if I wanted to file my own second language translation in French and THAT had more than 512 characters, then I should have split the original English AS WELL AS the corresponding FRENCH to bring the French within the prescribed limit: e.g:
"retail store services, available through catalogues and via a global computer network, featuring prints and publications, software programs and recordings of text and multimedia presentations relating to international business, to policy development, self-regulatory rules, codes, and guidelines for business and international trade; retail store services, available through catalogues and via a global computer network, featuring prints and publications, software programs and recordings of text and multimedia presentations relating to alternative dispute resolution;”
That’s 332 + 235 = 567 characters (not counting those semicolons), where we had only 371 before.

And in French:
"services de commerce de détail, disponibles dans des catalogues et via un réseau informatique mondial, et proposant des imprimés et des publications, des logiciels informatiques et des enregistrements des présentations de textes et de multimédia en rapport avec le commerce international et des affaires, du développement de la politique générale, des dispositions d'autorégulation, des codes, des lignes directrices pour le commerce international et les affaires; services de commerce de détail, disponibles dans des catalogues et via un réseau informatique mondial, et proposant des imprimés et des publications, des logiciels informatiques et des enregistrements des présentations de textes et de multimédia en rapport avec des modes alternatifs de règlements des différends;”
That’s now 463 + 313 = 776 characters, where we only had 518 before.

Ah, but now, OHIM’s automatons would be happy as we have fewer than 512 characters between any pair of those vitally important -- to OHIM -- semicolons.

This seems to me to be another absurdly artificial contrivance, which is pointlessly cumbersome to implement, is not a legal requirement (I didn’t see any proposal to amend the Community Trade Mark Regulation so as to include a 512 character limit), and is just simply not appropriate.

Katpat(isserie)
I only ran into this problem because of our French second language translation. If I hadn’t provided that, OHIM would have had to have that translation made itself, along with translations into all the other EU languages. Is OHIM now going to oblige each translator to ensure that their translations, in whatever EU language, must have fewer than 512 characters between semi-colons? Does that mean that if one translation cannot be made in under 512 characters, all the rest and the original first language would have to be revised so that all are eventually under the limit, even if it means adding the sort of silly repetition as in my example above? That would surely be impossible to implement. So why does OHIM think it appropriate in any way to force the applicant to restrict their initial entries in first and second languages to only 512 characters?

This 512 character limit also seems to unfairly discriminate against our French colleagues, and no doubt others in other EU languages who might take longer to say the same thing in their first language than it does in English. I expect that there are others who could say it in fewer characters too. So this 512 character limit is internationally unfair as well as being arbitrary.

PLEASE, LET THE OHIM POWERS THAT BE REALISE THE ABSURDITY OF THIS ARTIFICIAL IMPOSITION AND PLEASE REMOVE IT NOW!

I do understand that the OHIM software designers are using the semicolons to break up the lists of goods for easier display after entry, but that is not essential, and the inability to edit words or amend class details after entry, apart from deleting each semicolon separated unit by unit in the new system, is very frustrating for users too.

There may be a case for OHIM adopting a system like TEAS PLUS in the US, and having a reduced filing fee if applicants use accepted descriptions from TMClass, but this should not be forced, and nor should it need a 512 character limit. The nature of goods and services is continually changing and applicants should always have the option to use their own descriptions relevant to each class, regardless of whether they have 512 characters between semicolons or not!

With apologies for having considerably exceeded the normal blog character limit,
Yours in a combination of sadness for what might have been so beautiful and rage at what we actually have,

[Name and address withheld]
Now even the Kats are crying ...

Colons here and here
Semicolons here and here
Colonic cleansing here

6 comments:

Ben Mooneapillay said...

I wonder how OHIM would react if users started fax filing their applications instead..?

Sally Cooper said...

Interesting ! And I can understand the difficulty in the relevant context of Class 35 and retail services. I had a (small) moment of panic recalling the late 1990s and wanting to be sure that if there was publicity about astronauts playing (computer or video) games in outer-space - we had it covered. The (then) solutions was : "digital games provided by means of local computer networks, global computer networks, the Internet, cable or wire communications services, wireless telecommunications services and broadband telecommunications services". This, I'm told by Microsoft / Tools / Word Count is
217 including spaces. So two questions : (1) is 512 really a problem ? (2) why 512 ?

The iPuffin said...

512 is a problem. It is a problem if you have a reasonably extensive list of products, such as a retailer of clothing (who also wants retail services for goods in classes 3, 9, 14, 18, 20 and 24).

The answer seems to be to chop it up and repeat the "reatil services" bit, and then await the tedious fax from OHIM raising a deficiency notice because it would be better as a single list.

The phrase used to be lions led by donkeys. For OHIM I say donkeys led by non-assembled IKEA furniture

Jeremy said...

Sally, You ask why 512: it's a magic number: 2 x 2 x 2 x 2 x 2 x 2 x 2 x 2 x 2 -- so it's probably something to do with binary computer operation. Other than that, I've no clue.

Mark Summerfield said...

As Jeremy has rightly pointed out, 512 is exactly 2 to the power 9. More to the point, however, a single character (assuming Unicode encoding) takes up two bytes of storage, so 512 characters is exactly one kilobyte.

All this suggests that the limit is due to some memory allocation, or database record limit, i.e. practitioners filing trade mark applications are having an artificial and irrelevant constraint imposed upon them by some technical factor that a developer does not want to resolve.

This is stupid beyond words. But anybody who has ever had to deal with the IT department in a large, bureaucratic organisation, will not in the least surprised!

Meldrew said...

Is it 'cos they can't spell 42?

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