tag:blogger.com,1999:blog-5574479.post4398912628411897116..comments2024-03-19T10:50:27.835+00:00Comments on The IPKat: Classes, clarity and confusion: the legacy of IP TranslatorVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-5574479.post-4070861458781686932013-01-17T12:51:21.790+00:002013-01-17T12:51:21.790+00:00use of class headings and effectively all goods in...use of class headings and effectively all goods in a class is plain lazy and practitioners who do this should be ashamed in my view.<br />Part of your job is to tailor the specification to the precise commercial interests and likely future revenue streams. I would personally favour abolishing the class headings and requiring applicants to specify their interests- not to an anal US level of detail but avoiding the 'I want it all' approach. The huge majority of applicants will not get anywhere near most of the goods in an alphabetical list for a class. A dose of realism is needed but whilst stuck with IP TRANSLATOR won't be arriving any time soon.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70227544652903272672013-01-17T08:33:39.668+00:002013-01-17T08:33:39.668+00:00I totally agree -- IP TRANSLATOR has left a real m...I totally agree -- IP TRANSLATOR has left a real mess in terms of OHIM specifications.<br /><br />I initially toyed with including the alphabetical list on occasions when it could be implied by means of a simple declaration.<br /><br />However, following the OHIM changes -- where the alphabetical list is explicit and also excludes any bespoke wording -- my view is strongly that it is almost always better to draft your own specification instead. That way you can know that you are representing your client's business as accurately as possible and (hopefully) providing a bit of future-proofing as well. <br /> <br />Much better than relying on a list of fairly abritrary terms that have emerged from slow-burning treaty negotiations and inevitably lag behind commercial reality.<br />Hastings Guisenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-62109773314564682782013-01-16T18:19:26.492+00:002013-01-16T18:19:26.492+00:00Barbara -- but this wasn't one of my lunching ...Barbara -- but this wasn't one of my lunching opportunities ...!Jeremyhttps://www.blogger.com/profile/01123244020588707776noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-52148671242356496682013-01-16T18:12:55.928+00:002013-01-16T18:12:55.928+00:00Sadly I don't have the pleasure of all these l...Sadly I don't have the pleasure of all these lunching opportunities. However, I have followed IP translator and the original intention of OHIM was to simply allow the tick box principle of 'all goods in the class' but of course that wasn't going to be acceptable to WIPO and it wasn't consistent with the decision in any event which contains a very clear statement that there is a requirement of clarity and precision for identifying goods and services and it is both trademark offices and economic operators (applicants/clients) that have to understand the specification. <br /><br />You can use the class heading without the accompanying list, where they are sufficiently clear and precise. The CJEU does not decision does not preclude it and OHIM are not likely to object. (For what it's worth, I think the the class 9 heading is fairly clear and precise). <br /><br />The current OHIM solution which works well for computer programmers but badly for agents is where things have gone horribly wrong. The OHIM regulation doesn't require an intention to use and if applicants want maximum value for their Euro, there will always be some who tick boxes. I don't think OHIM should make it that easy. We should lobby for the form to be changed back, so as not to encourage these horrendously long specifications. If the applicant wants to the alphabetical list, let the man copy it in himself. With the lovely Euroclass tool there is no difficulty in assembling fully acceptable specifications.<br /><br />In one case where my application had to be re-examined because of IP translator, the objection was withdrawn. It would be cynical of me to suggest that the examiner really didn't have the heart to go through the alphabetical list pointing out which were and which were not objectionable. <br /><br />The only consolation is that in 5 years time there are going to be a lot of agents faced with non-use actions who have to delve through their own lengthy specifications and assert with clarity and precision how their actual use relates to the specification they so carelessly drafted.<br /><br /><b>Please OHIM don't make long specifications too easy. </b><br /><br />It would also be interesting to know if OHIM has raised any objections to lack of clarity and precision in a specification of late, or is this only something that happens in South Korea.Filemothttps://www.blogger.com/profile/15735898485265104580noreply@blogger.com