Sunday, 24 June 2012

IP TRANSLATOR, or why MY BRANE HERTZ

If the words IP TRANSLATOR don’t immediately ring a bell, don’t worry. Probably it just means that you are not a EUropean trademark lawyer. (Neither am I, but I play one on TV.) IP TRANSLATOR, or more formally Chartered Institute of Patent Attorneys v Registrar of Trade Marks (C-307/10) is an important trademark case decided by the EU Court of Justice earlier this week. To help you understand what I’m ranting about, let’s start with some background. (Oh, and it’s IP as in Intellectual Property, not Internet Protocol.)
1. The two essential components of the registration of a trade mark are (a) the sign and (b) the goods and services which that sign is to designate. Each of those components makes it possible to define the precise subject-matter of the protection conferred by the registered trade mark on its proprietor.
(from Advocate General Bot's Opinion or draft judgement)
What this means in practice is that the same word(s) can be a registered trademark for several different owners at the same time, as long as the products are different enough. High-reputation marks are a bit different in that they receive a broader scope of protection because anyone else trying to register, say, ROLLS ROYCE for anything whatsoever has certainly chosen the mark to try to gain unfair advantage of the earlier brand’s reputation. Even if many of the trademarks you can recall might be high-reputation marks (and certainly all the most valuable brands are, which is kind of the whole point), the vast majority of trademarks in the registries are not high-reputation marks, and thus must coexist with similar marks of others’ if necessary. In the EU trademark registry at OHIM (Office for Harmonization on the Internal Market (Trade Marks and Designs)), at the top of the list (apart from single-character renditions of picture marks) there are right now 90 different entries (granted/pending/rejected applications) for FUSION, also 90 for ECLIPSE, and 89 for EVOLUTION.

In order for the registrars (and everyone else) to keep track of the different products for which marks are registered, they are classified into 45 different classes according to the Nice Classification, 34 classes for tangible goods and 11 (up by three quite recently) for services. The classes are quite uneven in their scope, ranging from
Class 9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
to
Class 23. Yarns and threads, for textile use.
The classification also contains an Alphabetical list of over 8000 more specific product descriptions divided into the individual classes (637 in class 9; 22 in class 23). Overall, in my opinion, the Nice Classification stands out as a relic of a bygone era designed to fully leverage the state-of-the-art computing power of index card technology. (Using words like ‘gutta-percha’ in the class headings doesn’t exactly help.) Of course, fifty-odd years ago the registries were also much more manageable in size.

In EU (at OHIM and in most of the Member States), it has been possible to register a trademark not only for a detailed list of specific goods and services (obviously covering only those) but also for all goods and services in an entire class by using the class heading as a product description. This is different from eg the US, where only specific products must be used, and trademark protection normally only extends to those products for which the mark is actually used in trade, even if the original registration also covers additional products.

Another thing to remember is that a trademark must be able to distinguish the owner’s product from those of others’. Because of this, a trademark cannot just be descriptive and quite simply name the product by its common name. Trademark degeneration, or a trademark becoming a generic name for a certain type of product, can mean that the trademark is no longer protected. (This has happened for example for ASPIRIN in the US, whereas in Europe Bayer’s registration is still valid.)

In the IP TRANSLATOR case, the CIPA applied for registration of IP TRANSLATOR as a UK trademark for ‘Education; providing of training; entertainment; sporting and cultural activities’ in class 41, which also happens to be the class heading for that class. The UK Registrar refused the application based on OHIM’s classification guidelines (Communication 4/03) on the grounds that IP TRANSLATOR is descriptive for translation services, which are also a part of class 41, even though they certainly do not naturally fall under any of the categories listed in the class heading in normal parlance. Of course there was an appeal, and this is where the ECJ was asked for a prejudicial opinion. And thus the ECJ opined:
[...]trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.

Directive 2008/95 [...] does not preclude the use of the general indications of the class headings [...] to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.

An applicant for a national trade mark who uses all the general indications of a particular class heading [...] to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
In response to this OHIM issued a new Communication 2/12 to supersede the earlier 4/03, requiring for future and pending applications one extra bit of information for each class of goods and services using complete class headings, namely whether it is intended to cover the entire class or not. This alone would only address the issue raised in last paragraph of the ruling, and ignore the first two altogether. Furthermore, the second paragraph in fine read together with first one quite simply means that not all class headings are created equal. The ones that are sufficiently clear and precise standing by themselves (like class 23) are fine, but others (like class 9) are not. This would of course bring registration practices more in sync between the EU and the US, which some might argue is a Good Thing. Actually this is even spelled out quite clearly earlier in the judgement:
54 In that connection, it must be observed that some of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise to allow the competent authorities to determine the scope of the protection conferred by the trade mark, while others are not such as to meet that requirement where they are too general and cover goods or services which are too variable to be compatible with the trade mark’s function as an indication of origin.

55 It is therefore for the competent authorities to make an assessment on a case-by-case basis, according to the goods or services for which the applicant seeks the protection conferred by a trade mark, in order to determine whether those indications meet the requirements of clarity and precision.
In response to this, OHIM is, for the time being, reviewing all incoming and pending applications using class headings on a case-by-case basis, while also trying to make up its mind as to which class headings are still okay, together with the local registrars. Even if registrations such as the class heading for class 9 are no longer allowed, the ones registered up to this point will of course still remain in force unchanged.

Of course my interpretation is far from being the only one around. From a trademark attorney’s job security perspective, this one by Niamh Hall as seen on IPKat would probably be the best one I have come across so far. Not only would class heading registrations be allowed for all classes, but they would only cover all products listed for that class in the Alphabetical list of the Nice Classification (and perhaps not even the latest one if the mark is older), and not just all the products that would eventually end up in that particular class, thus potentially excluding over 85% of the individual products listed in EuroClass, the product classification system used by OHIM and an increasing number of local registrars. From the perspective of legal certainty and predictability, this wouldn’t exactly be optimal.

(provide 'rant)

No comments:

Post a comment