IP TRANSLATOR: a sun-drenched perspective

True trade mark aficionados can be found
on sunny beaches everywhere, unshakable
in their determination to resolve the class
headings problem ...

Having just returned from a holiday in Sicily after the ECTA conference in Palermo, Richard Ashmead has been putting some thoughts together on the effects of Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR judgment: 'IPT') on 19 June, and on OHIM’s rapid response in its 20 June Presidential Communication No. 2/12.  Though this post is long, the IPKat feels that it's worth posting in its entirety since it gives such a clear and well-argued account of a decision of Europe's highest court which has been taken insufficiently seriously by many because of its unsexy facts but which can have profound effects for trade within the single market -- and between Europe and  her trading partners.

Richard's passion for sorting out the inconsistency of treatment of class headings in European trade mark law is not one man's obsession. It is shared by other respected practitioners within the European Union, one of whom is seasoned Netherlands practitioner and MARQUES stalwart Bas Kist (you can read an English translation of his own critique of IPT for Boek9 and IE-Forum, here). MARQUES, incidentally, was the first international trade marks organisation to issue a formal position on IPT: you can read it in full here.

Anyway, without further ado, this is what Richard has to say:

The problem

The problem behind the IPT case is legally quite simple: must Nice International Classification (“IC”) class heading wordings, when used as the list of goods (for which read “goods/services” where it makes sense) in EU trade mark applications/registrations be construed according to their natural and usual meanings, ie the “means-what-it-says” approach, or as a sort of code for “All goods in class XX”, ie the “class-heading-covers-all” approach exemplified in OHIM’s now-renounced nine year old Presidential Communication No. 4/03?

Why such a problem with class headings?

The use of class headings as the list of goods in EU trade mark applications is widespread and is at the heart of IPT. The alternative of describing the goods of actual or planned commercial interest (and often a bit of extra wording to cover predictable line extensions), also widely used, is largely unaffected by IPT.

Many trade mark owners like the idea of getting broad goods coverage for their registration fees. Since they have to use Nice IC classes in their EU applications, they seek to cover as much as they can of the goods which happen to fall in the class(es) of commercial concern to them. “All goods in class XX” would do that, but is generally no longer acceptable to EU IPOs so a second-best practice has developed of using the whole class XX heading wording as a convenient way to cover (hopefully) the actual goods of commercial interest plus (speculatively) a good proportion of the rest of class XX. None of the Nice class heading wording actually covers 100% of its class content, but they are mostly quite broad listings with some, I imagine, coming tantalisingly close to “All goods in class XX”. Let me for now though assume an illustrative average of 90% class coverage for class heading goods claims.

Nice class headings are popular with trade mark owners, are routinely claimed in large numbers of EU applications, and are generally acceptable to IPOs. OHIM’s online application filing system even defaults to class heading goods lists. The question of whether they should be acceptable is for another time, but from many perspectives the use of these class headings has been workable. It has a sting, though, in that OHIM and some EU states have decided, for reasons which probably no longer matter, to enhance the scope of class heading registrations by treating them as having the same scope as “All goods in class XX”, the tantalising 100% class coverage. I say “sting” -- but that extra scope is seen by many trade mark owners as a positive benefit, albeit rather less so by third party mark users, if at all. The result though is that the same Nice class heading wordings in some EU registrations can provide monopoly rights at 90% of the class content (eg in the United Kingdom, Denmark, Germany and France), and under OHIM practice and in that of some other countries 100% (eg Finland, Hungary and Italy) – all in our multi-state trade mark system throughout which equivalent trade mark registrations are supposed to have the same effects. This has been the focus of the so-called “class heading dispute”, and perhaps because of that terminology it is sometimes assumed to be a filing and classification issue. It is not. It is a matter of the substantive legal monopoly scope of trade mark registrations, most relevant in inter partes trade mark conflicts.

The IP TRANSLATOR case

The London-based Chartered Institute of Patent Attorneys (“CIPA”) filed a UK trade mark application for IP TRANSLATOR embodying that simple legal question: which of “means-what-it-says” or “class-heading-covers-all” is correct in EU law? The case reached EU Court of Justice of the European Union by a notably direct route involving an appeal from the UK IPO to Geoffrey Hobbs QC sitting as the Appointed Person; he stayed the appeal and made a reference for the Court of Justice’s preliminary opinion on the correct, harmonised, EU law to be applied.

The Appointed Person asked the Court three questions which appear below, with the Court’s answers, all somewhat précised;

Q1: Is it necessary to identify goods with any, and if so what particular, degree of clarity and precision? 

A1: Goods must be worded with sufficient clarity and precision to delimit its scope “on that basis alone”, ie as it stands. 

Q2: Can the general words of Nice class headings be used to identify the goods covered by a trade mark application?  

A2: Some/all of the general indications making up class headings can be used in applications, if sufficiently clear and precise to comply with answer 1 above.  

Q3: Is it correct EU law to apply the 4/03 approach and treat class heading registrations as covering “All goods in their class?  

A3: An applicant for a national trade mark (and by implication also a CTM) using a class heading must specify whether it intends to cover: (i) all the goods included in the alphabetical list of that class, or (ii) only a specified part of those goods.

Answers I and 2 are all but axiomatic and do helpfully confirm that:

• any list of goods in an application must be clear and precise as it stands, and  

• some of the general indications in class headings are, as they stand, sufficiently clear and precise while others are not, so logically some class headings may be clear and precise while others are not.

This may have other effects on classification and goods descriptions in examination of EU trade mark applications (on which see the second of my April 2012 “Lost in IP Translator” trilogy of mini-treatises, here) but, as far as class headings are concerned, so far so good. But then we get to the third question, which has produced a worryingly complex answer. What the court’s third answer is not, specifically, is:

“Is it It is not correct EU law to apply the 4/03 approach and treat class heading registrations as covering “All goods in their class”?

... but that answer is implicit, as any goods wording in an application must be clear and precise as it stands. Indeed, were it not implicit, OHIM would scarcely have renounced its hard-defended 4/03 the day after the Court’s judgment. I will therefore take it that 4/03 and “class-heading-covers-all” have been found not correct in EU law and work from there.

What the Court does say in answer to question is that an applicant for a national trade mark (and by implication also a CTM) can use a Nice class heading if the applicant says in the application that this is intended to mean “all the goods or services included in the alphabetical list of that class”. This is odd in at least two ways (i) the effect attributed to the applicant’s intentions and (ii) the adoption of alphabetical class lists as a goods scope which can be intended by class heading wording.

Applicants’ intentions of goods scope

The proposal that the scope of a registration is determined by the intended meaning of the applicant’s goods wording is puzzling. The Court was at pains to make clear that entry of a mark in a public register is to make it accessible to both the authorities and public, which fits with its answers to the first and second reference questions on clarity and precision, but then says that the applicant’s intent can override whatever degree of clarity and precision its chosen form of wording may have.

It is beginning to look to me that the Court is tying someone in knots, possibly itself and surely me, by trying to accommodate the unnecessary, but customary, use of numbers of unclear and imprecise class heading wordings in trade mark applications. Indeed this starts to look like a post-hearing attempt by the Court to answer a question it was not asked::

“[3A] Assuming the application of 4/03 is not correct in EU law, how must we construe all existing (CTM?) class heading registrations?”

This mock question 3A is good one, but I think its answer is capable of being deduced from Court answers 1 and 2, particularly if it had also answered reference question 3. Presidential Communication No. 4/03 said the class XX heading wording can simply be deemed to cover “All goods in class XX”, but the Court now says this cannot be so for reasons of an innate lack of clarity and precision. How then can the same class XX heading wording simply be deemed now to cover another form of wording (the Nice alphabetical lists) either on the applicant’s intent or otherwise?

Perhaps the Court was thinking that the class XX alphabetical list is a clear and precise list, so that sidestep on intent could do no harm. I think, in fact, that it can do harm and will come to that but, that aside, if the applicant wants coverage of the class XX alphabetical list, why not use it?

Nice alphabetical class lists

These have rather come out of the blue as a substantive aspect of goods scope determination. Nice alphabetical class lists were mentioned in 4/03, in the Appointed Person’s reference order, in numbers of other parties' (confidential) submissions to the Court and in the AG’s Opinion, but only to explain the overall structure and operation of the Nice IC system. They did not appear in the Court’s pre-hearing questions to parties at all, and I have no recollection of them appearing with any substantive import in any of the parties’ written or oral submissions to the Court, nor in any (of the very few) questions the Court asked at the hearing. Why then have they surfaced so pivotally in the Court’s judgment?

I have not yet looked in any detail at the Nice alphabetical class lists, but as class by class compilations of accepted goods terms my guess is that some are narrower than their class heading wordings and some (possibly most) are broader, perhaps as below using my earlier assumed figures and a new assumption for Nice alphabetical lists:

Goods wording of application/registration           % of total goods in class XX “ 

All goods in class XX"                                                          100%
Class XX heading                                                                 Say, 90%
Class XX alphabetical list                                                     Say, 85-95%

My guess too is that most class alphabetical lists are clear and precise as required in the Court’s reference answers 1 and 2, and are probably also Trademark Law Treaty (“TLT”) compliant as readable lists of goods. Is then the Court trying to give owners of existing class heading registrations something more than the class heading wording but less than the 100% coverage “lost” with 4/03? If less in any class heading, that will not have worked and if, more, the spectre of impermissible broadening rises again in from the pyre of 4/03. For that can I just refer to the first of my April 2012 “Lost in IP Translator” trilogy of mini-treatises, here, but in short I think that for many classes the class XX heading will be narrower than the class XX alphabetical list, through inclusion in the latter of terms like, eg, computer programs in class 9, music stands in class 16 and sleeping bags for camping in class 20 not present in the former.

The Court’s answer to question 3 gets more difficult as you try to give the same treatment to existing registrations, pending applications and future applications, and I am fully ready to be persuaded that my thoughts to date are in error, but it does look to me that by seeking to address the unasked question of treatment of the many thousands of existing class heading registrations the Court has corrupted its overall opinion on the questions which were asked. Just think of future applications like this:

Mark: XYZ  

Class: 15 

Class heading goods list: Musical instruments  

Goods “tick-box” claim to  ... the whole class 15 alphabetical list of goods

Is that IPT- and TLT-compliant as clear and precise as it stands and., if music stands are in the class 15 alphabetical list, is the latter broader than the former?

Lastly for now on class alphabetical lists, numbers of people have commented on the difficulties of knowing just what the lists covered on any date past - see notably in the IPKat’s 22 June piece here which explains that it both grows and is pruned back over time, with successive editions published in 1963, 1971, 1981, 1983, 1987, 1992, 1996, 2001, 2006 and 2012 (the tenth edition having entered into force on 1 January 2012). There are though (and presumably have earlier been more) intervening updates, as reported here, which includes changes and additions to the tenth edition to come into force on 1 January 2013. The Sieckmann criteria include “durable” -- which these alphabetical lists clearly are not.

Presidential Communication No. 2/12

This was issued the day after the Court’s judgment, evidently after an OHIM all-nighter. It seizes on the Court’s alphabetical list approach and applies it in different, but more or less consistent ways to existing registrations, current applications and future applications. For now though I’d like to concentrate on its effect on existing registrations.

OHIM in 2/12 says that CTM class heading registrations will be assumed to have been filed with knowledge of 4/03 and, presumably, with a belief of its correctness in law. Accordingly all extant CTM class heading registrations will from 21 June be assumed by OHIM to have been intended to cover not (as in 4/03) the full class content, but all goods in the relevant class alphabetical list!

I imagine some owners will (since June 2003) have been aware of 4/03 and some not, and others aware of 4/03 but not convinced of its legal effect. Those aware of 4/03 and convinced of its legal effect could have had an intention to cover “All goods in class XX” (even without being able to identify what many of those goods may be) but how does that create an intention to cover all the goods included in the relevant class alphabetical list, but not the rest of the class content? OHIM seems to be distorting an owner’s arguable, and unstated, intention on filing to cover 100% of the class content into an arbitrary lesser intention creating, in the felixitous words of IPKat’s ever supportive yet generally unsung Merpel, as follows:

“ ... an administrative convenience leading to a rebuttable presumption -- and nothing more than that”

Intent issues aside, does treating a class XX heading registration (by OHIM or otherwise) as covering the whole of the class XX alphabetical list seem to generate impermissible broadening in the same way as did treating a class XX heading registration as covering “All goods in class XX”? Not quite as generous or far-reaching -- but still impermissible. I did not think before IPT that OHIM (or any other EU IPO) had the power to broaden a granted IP right. Does the Court’s judgment then give that legal power?

Conclusions (to date ...)

The fairly rapid IPT-related events of the last couple of weeks have been difficult to distill, and indeed still are, and have produced shifting results in my mind and in those of many others with whom I have spoken or corresponded. “It is not over yet” has though been a common comment, and I agree with that even if I cannot yet see the overall picture with enough clarity to feel I have “cracked it”. My conclusions, as try to conclude I must, are as follows:

(a) The Court has made clear that the wordings of all goods listings (class headings or otherwise) in EU applications must be clear and precise, on that basis alone, according to their natural and usual meanings. 

(b) Class heading wordings have no hidden magic making them clear and precise, but some may be in fact clear and precise enough.   

(c) The Court has disposed of 4/03 and “class-heading-covers-all”, so a Nice class heading registration does not, and did not, cover more than its words when read according to their natural and usual meanings 

(d) The Court has linked the validity of class heading registrations to a mixture of intent and deemed coverage of Nice class alphabetical lists which is 

(i) inconsistent with point (a) above, and  

(ii) likely to involve goods scope broadening and cannot therefore be lawfully implemented eg within the bounds of the existing international legal framework. 

(e) If a re-reference to the Court is possible it is needed; if not, a new reference case is needed -- which OHIM’s Communication 2/12 seems likely soon to provide. 

(f) The Commission’s drafting package for a new Directive and CTM Regulation is still awaited, and could presumably override the Court, but would it? And could it be retroactive?

OHIM’s practice for future applications creates other difficulties, notably why use a Nice class heading to mean something else, and thereby make it certainly unclear and imprecise. More is needed on that as we progress.

“It is not over yet”

If not what happens next? OHIM has taken a lead with its Presidential Communication 2/12 and renunciation of its 4/03 practice, but the main question seems to me whether the other EU IPOs will be willing – and able – to follow and implement the Court’s third answer as is or as interpreted by OHIM. These IPOs will clearly wish to harmonise their practices but, if the Court’s practice indicated in IPT reference answer 3 cannot in fact be implemented throughout the EU, there will still be no harmonisation or clarity.

I gather that a further reference from the Appointed Person is technically possible, and has indeed happened before.  The decision to make such further reference lies within the Appointed Person’s discretion as the IPT appeal remains stayed until he is able to decide it. It is an interesting question, then, whether the Appointed Person can actually decide the IPT case as it stands using the Court’s current reference answers, and whether there is basis in the judgment for a re-reference.

Another possibility is to rely on the Commission to address the problem in its long-awaited draft Directive and CTM Regulation package. Before the Court’s IPT judgment there was the question whether the Commission could change law or practice retroactively, and indeed how it could negate or support a merely interpretative opinion such as that of 4/03, now renounced. The Commission would seemingly have to cherry-pick from the Court’s reference answers, and work out whether its international obligations allow formal provisions for IP claim broadening. I am doubtful on that.

My feeling is that a re-reference in IPT or a new reference in another case may be the answer – but with another two years of uncertainty, and if anything with more uncertainty than before the 19 June Court judgment, other options may need to be pursued.