The new Community trade mark top-up: a call for debate

Class headings as viewed
by the European Commission

If there were Oscars for sheer persistence in the face of apathy, indifference and downright hostility, Richard Ashmead would be in line for one following his sustained commitment to pressing for a sane, workable and consistent resolution to the European Union's patchwork approach to the treatment of trade mark applications where the specification of goods or services for which registration is sought makes reference only to the class headings.  This issue has gone all the way up to the Court of Justice of the European Union and then back down again, with every appearance of it being a problem that is not so much solved as redefined as it shifts from one legal or commercial context to another.  Here, as the current game of European trade mark reform approaches the endgame, it seems that a simple, single solution that will apply equally to Community trade marks and national marks may still be allowed to evade our grip -- and this will certainly happen if we ignore it.

In the guest post below, Richard calls for debate.  This is what he says:

New CTM top-up provisions  

There is a further sting in the European Commission's proposal for the new Community Trade Mark Regulation (CTMR). It contains at Article 28(8) (see below for the text) provision for CTM class heading registrants to request a top-up of their list of goods beyond the literal meaning of their class heading wordings. This proposal is based, I assume, on the view of the Office for Harmonisation in the Internal Market (OHIM) that all class heading CTMs from before the ruling of the Court of Justice of the European Union in Case C-307/10 Chartered Institute of Patent Attorneys (the IP TRANSLATOR judgment) can be deemed to have been made with an intention to obtain the full scope of protection for all goods within the class. The likelihood of there being upwards of 300,000 class heading CTMs dated before June 2012 gives a measure of how many CTMs could be topped-up into a broader goods/services scope. Would then the UK Intellectual Property Office and courts have to apply those CTMs as broadened? 

I gather that wording similar to this top-up provision may also have been in some recent earlier drafts of the new Directive, but it is not now and the published Directive proposal seems pretty fixed on the "means-what-it-says" principle right across the board, eg at Article 40(5) (see below for the text).   Does that mean that the European Commission approves of a CTMR broadening top-up provision, even if this is inconsistent with its own Directive provisions, or that it does not  approve -- but was prepared to go along with OHIM liability etc concerns to develop a debate? If the latter, I truly hope that the debate follows lest we find, in all EU member states, numbers of past user decisions based on "means-what-it-says" being turned from arguable similarity matters to unarguable infringement for identical goods under new CTMR Article 28(8).

The proposed CTMR Article 28(8) reads:

Proprietors of European trade marks applied for before 22 June 2012 which are registered solely in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class of the edition of the Nice classification in force at the date of filing.

The declaration shall be filed at the Agency within 4 months from the entry into force of this Regulation, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor's intention. The Agency shall take appropriate measures to amend the Register accordingly. This possibility is without prejudice to the application of Articles 15, 42(2), 51(1)(a) and 57(2).

European trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.

and Article 40(5) of the proposed Directive re “Designation and classification of goods and services” reads

The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.

There has been little sign of debate on this proposal which of course requires a reading of the CJEU’s IP TRANSLATOR judgment as new law rather than confirmation that "means-what-it-says" is/was correct EU law throughout despite OHIM’s earlier support for class-heading-covers-all. Geoffrey Hobbs QC as the Appointed Person in his 2 May 2013 Decision applying the CJEU’s IP TRANSLATOR Judgment commented on this that:

…. there is no temporal limit on the effect of the Judgment delivered by the Court: the legal requirement for clarity and precision continued to apply in relation to applications for registration filed under the TM Directive  before  and  after  codification and under the CTMR before and after codification.

MARQUES comments against these top-up provisions in its position paper here, and INTA has taken issue in its comments here merely that 4 months to request top-ups is insufficient.

We are here talking about a potentially large number of registrations of EU-wide effect being broadened, with no mention of a new rights date for so added goods/services (if that is indeed possible in the CTM system). That to me suggests that a very public debate would be valuable, notably on the effects of top-ups on third parties who have relied on a legally correct "means-what-it-says" reading of the scope of such class-heading registrations.