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IP TRANSLATOR: the fire rages --
help the Kats to put it out |
Note for non-Europeans and non-trade mark people: you may have skipped over the posts on this weblog that appear from time to time in which the words "IP TRANSLATOR" appear, on the ground that they relate to something that is boring, irrelevant or insufficiently sexy to be paraded so frequently on an intellectual property weblog. Well, that is a point of view -- but, if it's yours, we'd love you to reconsider it. The Court of Justice of the European Union's ruling in Case C-307/10 Chartered Institute of Patent Attorneys (better known by the name of the trade mark applied for in that case, IP TRANSLATOR) last year does involve European law, it's true. However, it raises issues that are of fundamental relevance to the way trade mark-granting bodies grant trade marks and the way that courts decide trade mark opposition and infringement issues in the 83 countries that officially subscribe to the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as well as in those other countries that give a nod to the Nice Agreement without actually signing up to it. Crudely stated, and shorn of such inconvenient things as detail and accuracy, the basic issues for laymen are like this:
- (i) when you want a trade mark for goods or services, how do you describe what you want it for?
- (ii) how do trade mark-granting offices balance the demands of truth, accuracy, predictability, the need to protect marks only to the extent that they are going to be (a) used or (b) confused with marks that are already protected, cost-effectiveness and administrative convenience?
- (iii) once you've got that trade mark, what have you got it for?
Not only does the IP TRANSLATOR ruling cause a lot of anxiety to businesses that are trying to get their marks registered or to block potentially confusingly registrations by others, but it is also uncertain how it will affect trade marks that have already been granted. That's why so many people are getting so agitated about it. And now for today's blog ...
The ball kicked into play by Désirée Fields'
guest piece "Classes, Clarity and Confusion: the legacy of IP TRANSLATOR" continues to roll. First, in "Why Not Everyone is Happy to Tick the Box" (
here), Claire Lazenby and Ben Mooneapillay articulated their concerns. Now, spurred by publication of the details of the forthcoming
ECTA Workshop, "Brand Owners Life Before and After IP TRANSLATOR" (details
here) in Alicante on 21 February, Claire has gone one step further and has kindly agreed to allow the IPKat and Merpel to make the full text of her paper "IP TRANSLATOR and OHIM's reaction to it" --the source from which her earlier comments were drawn -- available to their readers, who can
read it in full here. Thanks, Claire, we do appreciate this, and we hope that our readers will do so too.
Reviewed by Jeremy
on
Monday, January 21, 2013
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This is a very interesting practical post and I think that the problem with the new OHIM's system goes beyond.
ReplyDeleteImagine an application in class 35 where the client whishes to apply for all the services in the class. well, Retail services are not listed in the Nice classification so, if the client intends to offer those services and you have ticked the relevant "all the services in the class bos" you find yourself in front of an incredibly long list of services but still you need to add a the specific ones.
From a practical point of view it is even worst: you cannot add any furhter services to those provided by the system when you have ticked the "all services" box. the OHIM's advise? copy the list of services furnished by the system, paste them into a word file, add those the client needs and include them in the application form without ticjking the all service box. Easy, right?