Lost in IP Translator -- a trilogy of treatises: III

By now most readers will be aware of the impending ruling in Case C-307/10 Chartered Institute of Patent Attorneys, which was referred to the Court of Justice of the European Union (CJEU) back in 27 May 2010.  The Opinion of Advocate General Bot was delivered on 29 November last year. Readers may also be aware of the awesome silence that has descended on this case since the Opinion was given.  Time passes, the 2012 Olympics approach, and another few million Chinese are born, but the Curia diary here remains silent and static.

For the benefit of new readers, the problem at the heart of this action is this. The Chartered Institute of Patent Attorneys applied to register the words IP TRANSLATOR as a UK trade mark for the products in Class 41 of the Nice Classification, headed ‘Education; providing of training; entertainment; sporting and cultural activities’. What's the problem, you might wonder. Well, it's this: translation services are not mentioned in the heading 'education; providing of training; entertainment; sporting and cultural activities' -- but they are listed as a subheading. You can't register IP TRANSLATOR for translation services, since it's descriptive and probably non-distinctive too -- but if you are only applying to register it for 'education; providing of training; entertainment; sporting and cultural activities', who says you even want that mark for translation services?  The practice of Europe's trade mark granting establishments varies: some say an application to register the things described in the heading automatically includes all things listed in the unmentioned side-headings. Others say you only get what you ask for and, if you don't mention translation services your application to register a mark for other things won't be fouled up by the fact that those services happen to fall within the class for which you've sought to register the headings.

In the third of his trilogy of posts on the subject, the IPKat's friend and seasoned trade mark practitioner Richard Ashmead concludes his reflections on the likely outcome of the ruling and its possible consequences for trade mark granting offices and practitioners in Europe:
IP TRANSLATOR consequences - part 3 
Two weeks ago I gave some thought here to the quite widely proffered proposal to provide compensation for CTM registration owners for perceived losses of anticipated scope if OHIM moves to a “means-what-it-says” approach, and last week I wrote here on whether a specific Court requirement for an EU-wide standard of clarity and precision in applications will affect the way OHIM and other EU IPOs examine lists of goods/services in applications. I also touched then on whether the AG in his IP TRANSLATOR Opinion does or does not speak against the use of genus terms in applications. These thoughts were all based on an assumption that the Court’s IP TRANSLATOR judgment will largely follow the November 2011 Opinion of its Advocate-General (summarised in bullet-point format here). 
This week I want to focus again on class headings and the approach to them of OHIM in its Convergence Programme.
OHIM’s Convergence Programme 
In July 2011 OHIM launched its Convergence Programme to try and reach common ground on a series of issues for which IP offices around the EU have different practices. It has gathered together over twenty other EU IPOs to work together to bring about further harmonisation of practices where no legal changes are required, those being largely the preserve of the Commission and its currently-awaited new Directive/CTMR package. OHIM expects to involve user organisations in its Programme too, but I do not know to which point it has reached. 
Of the Programme’s five current projects two involve classification. The first is “CP.1 Harmonization of TM Classification practice of G&S” which aims for agreement from all the Harmonised EU IPOs to use the same database of pre-approved goods/services terms, presumably under the Euroace banner. A part of this is called “Taxonomy”, which is described as looking to introduce a hierarchical genus-species structure to allowable terms within a given class. I am not yet fully clear how the results of their work on taxonomy will sit with WIPO’s class headings but a picture is coming together, of which more below. 
Next we have “CP.2 Convergence of Class headings”, which has been described as seeking a compromise between the EU IPOs which interpret class headings as meaning exactly what they say and those others (including OHIM) which treat the class headings as covering for all of the goods and services of their class. Some of OHIM’s published comment on CP2 has been confusing, or at least had confused me, notably that what became CP2 was planned “…. to try and reach consensus on different interpretations of the scope of class headings in trade marks …” and to “Develop a commonly acceptable set of comprehensive classification terms covering all goods and services in a given class at a given time”. This gave a feel of an attempt to keep the very “class-heading-covers-all” practice now likely to be dismissed by the Court in IP TRANSLATOR, but a later CP2 announcement I think starts to make things clearer in talking about: 
“... acceptable group titles usable in trade mark applications that in combination cover all goods or services in the harmonised database in a given class at a given time” (underlining added) 
Note that the underlined wording does not refer to all goods/services in a class, but in effect to all pre-approved terms in a listing such as Euroace. 
It looks then that this is a case of the CP2 team assembling all pre-approved goods/services in a class to produce a “class scope” list of most, but probably not all, goods/services in the class, which can be accepted under CTMIR Rule 2 and UK TMR Rule 8 (or whatever replaces them when the Commission’s work is done). The term “class scope” is a potential problem in that it gives a sense of full class content, whereas it actually seems intended to contain those goods/services in a class which have, to date, been approved. “Approved class terms” is not exactly felicitous but something along those lines will need to be developed to avoid any implication of full class cover. However if this understanding does reflect CP2’s expected outcome, it looks positive as a separation between what a class covers in the abstract and a listing of pre-approved goods/services in the class which can be used in any EU trade mark application. There will, I am sure, be within that a hope that the taxonomy approach to pre-approval will lead to some sort of “class-heading Mark II” for each of the 45 classes covering all goods/services in each class. I do not see that as possible but, if the appetite is still there to let businesses get registration rights for something close to all goods/services in a class, this could work. What that seems to suggest is: 
• The Nice Classification will continue to function as now, current class headings included, in deference to its international effect.  
• OHIM’s Convergence Group will produce a pre-approved and classified list of goods/services all of which will be acceptable in all EU applications, and ...
• ... a set of 45 “class scope” wordings (although hopefully not called that) covering as close as it can get to all goods/services in the class.  
• The pre-approved and classified list and the class scope wordings will not be exhaustive, so new or newly encountered goods/services can be included in applications subject to official clarification under CTMIR Rule 2 and UK TMR Rule 8 etc. 
The further good news is the CP2 project team’s indication that OHIM will use a “means-what-it-says” approach, and that with a common practice based on these class scopes “OHIM will not give any special treatment anymore to the Nice class headings”. 
One final point is on concerns that we may be heading for a requirement to use only pre-approved terms in applications. OHIM has though been at pains when asked that that will not be the case, ie that the use of pre-approved goods/services will not be a requirement for getting a valid filing date. That seems important in a world of fast changing commercialities and technology".
This, Richard adds, is the end on this short series on issues which may need attention following the Court’s IP TRANSLATOR judgment.  He hopes that this series will trigger more debate and thoughts on the legal and practical shapes the EU trade mark law and practice may take in the very near future.

The IPKat is disappointed that there has been so little debate so far on the content of Richard's two earlier posts and hopes this is only because readers were awaiting his final words before deciding what to say.
Lost in IP Translator -- a trilogy of treatises: III Lost in IP Translator -- a trilogy of treatises: III Reviewed by Jeremy on Monday, April 30, 2012 Rating: 5

1 comment:

  1. The Nice classification headers create a very false impression of business activity of proprietors. My feeling is that they are used as a way of expanding relative grounds protection beyond what was ever intended. The classification headers are cumbersome and an approach of narrow yet defined classifications is the fair way to move forward. OHIM's approach has allowed too many earlier rightholders to hold generic words to ransom from subsequent applicants because of the width of their classifications. Just look at what traders such as Apple Inc do on classifications (registering all 45) when they could rely on their Paris rights to prevent third party use, but instead block legitimate users from trading.


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