Prompted by the discussion at a presentation I gave yesterday on intelligent legal technology (titlend Älykäs oikeusteknologia, ie. in Finnish, for once) I guess I feel the need to export a part of the neural network that subsequently emerged in the form of a blog post. I was asked to define artificial intelligence, and since I refused to provide a definition, I was asked again. And again. So even if providing such a definition is quite irrelevant as I don’t research legal AI in general (in which case the delineation between AI and non-AI might be of interest) but rather some specific questions (modelling vagueness and uncertainty in law) which without a question are AI & law questions, here, for explanatory rather than definitive use, with no warranties for fitness for any particular purpose, yadda yadda yadda, are my two cents:
Artificial Intelligence is the cross-disciplinary enterprise of trying to do things with a computer which when done by people are said to require intelligence and which computers cannot (yet) do. (The careful reader may notice a certain degree of isomorphism with a popular definition within the extended cognition framework...)
(And comparison shoppers, here is Wikipedia’s current version: “Artificial intelligence (AI) is the intelligence of machines and robots and the branch of computer science that aims to create it.”)
So: Consistently with the bottom-up approach to AI I like to advocate in general, I don’t think allusions to the Turing test or the Singularity or whatever are all that interesting, as far as actual progress is concerned, the cognitive arts advance through innovations which are very small increments from the perspective of AI as a whole but can be quite dramatic for the topical discipline in question.
I do think that the trying (or aim[ing] to create) is an important part of what makes AI AI. Doing arithmetics also requires intelligence but has never been a part of AI since computers could do (and indeed were built to do) it properly from the beginning. And so on the way from notrespondingstilltrying to commercial viability, AI projects start being called computational whatever or whatever technology (hence legal technology). Of course the boundaries are vague and the whole boxological excercise of little use in anything other than turf-wars in academia.
And the fact that the definition refers to human intelligence just serves to illustrate the futility and question-beggitude of definitions for one simple reason: The psychological understanding of human intelligence just adds even more layers of complexity. For example, IQ tests cannot possibly measure human intelligence per se and in general. What they measure instead is a specific indicator known as the g factor (or general intelligence), which has been shown to correlate (reasonably) well with the more specific intelligent abilities.
Even if working on definitions can occasionally serve an useful purpose, personally I think in most cases the more expedient alternative is to follow Justice Potter Stewart in Jacobellis v. Ohio: “I know it when I see it.” For historical reasons, jurisprudence in Finland still has a particular affinity for concepts and definitions not really seen elsewhere to the same degree. I’m planning to address this issue in extenso at some point with the title Begriffsjurisprudenz 2.0. (Spoiler alert: may also offend ontologists.)
Thursday, 13 December 2012
Saturday, 8 December 2012
Peter Thiel on Singularity and legal technology
Betabeat (just one of many tech blogs I follow regularly) had yesterday a interesting post on Peter Thiel’s (Stanford Law graduate, PayPal co-founder &c &c) presentation at the Legal Technology and Informatics course held at Stanford law for the first time this past autumn. Blake Winters has kindly written and published an essay on the presentation, on which these brief comments are based.
Personally I think all this talk about the Singularity is mostly just a distraction (and of course fodder for dystopic science fiction). Actually functioning general-purpose artificial intelligence is not simply just a matter of bytes and CPU cycles or even fully replicating the neural network of a human brain at some instant (because so much of human intelligence depends on neurogenesis and the formation and pruning of connections, processes which only a couple of decades ago were still thought to end by adulthood), and anyway it is so far in the horizon that it is impossible to use as a target. There is still a lot of work to be done in trying to make sense about the actual functioning of human cognition. (The discussion about free will and whether Libet’s experiments show that it doesn’t exist is a good example.) Even if the Singularity does arrive at some point, the interaction of humans and computers at that time will not be something we can easily imagine. (Just compare whatever you are using to read this with a completely character-based interface (your only choice thirty years ago). And I still fondly remember the sound of a good mechanical teleprinter...)
To date, AI has been most successful when trying to solve very difficult but still quite concrete problems with computational methods. My rule of thumb is that when AI starts being useful, it stops being called AI. (Hence I also prefer to talk about (intelligent) legal technology rather than legal AI.) There are many branches of computer science and other computational sciences which started out basic AI research, with language technology as just one good example.
But more importantly, as for the shorter timeframe, I totally agree with Thiel. Computers are much better than people at some tasks and legal technology has great potential for radically transforming the marketplace for legal services (for the better) in the near future. The work we do at Onomatics will hopefully a good example from the more technologically advanced end of the scale, but our domain (trademark law) is just a very small corner of the entire legal system.
All this just reminds me that I should finally get around to writing two blog posts I’ve been thinking about for quite a while, one titled “Why do computers make better lawyers than people” and the other – of course – “Why do people make better lawyers than computers”. Real Soon Now!
Further reading:
Personally I think all this talk about the Singularity is mostly just a distraction (and of course fodder for dystopic science fiction). Actually functioning general-purpose artificial intelligence is not simply just a matter of bytes and CPU cycles or even fully replicating the neural network of a human brain at some instant (because so much of human intelligence depends on neurogenesis and the formation and pruning of connections, processes which only a couple of decades ago were still thought to end by adulthood), and anyway it is so far in the horizon that it is impossible to use as a target. There is still a lot of work to be done in trying to make sense about the actual functioning of human cognition. (The discussion about free will and whether Libet’s experiments show that it doesn’t exist is a good example.) Even if the Singularity does arrive at some point, the interaction of humans and computers at that time will not be something we can easily imagine. (Just compare whatever you are using to read this with a completely character-based interface (your only choice thirty years ago). And I still fondly remember the sound of a good mechanical teleprinter...)
To date, AI has been most successful when trying to solve very difficult but still quite concrete problems with computational methods. My rule of thumb is that when AI starts being useful, it stops being called AI. (Hence I also prefer to talk about (intelligent) legal technology rather than legal AI.) There are many branches of computer science and other computational sciences which started out basic AI research, with language technology as just one good example.
But more importantly, as for the shorter timeframe, I totally agree with Thiel. Computers are much better than people at some tasks and legal technology has great potential for radically transforming the marketplace for legal services (for the better) in the near future. The work we do at Onomatics will hopefully a good example from the more technologically advanced end of the scale, but our domain (trademark law) is just a very small corner of the entire legal system.
All this just reminds me that I should finally get around to writing two blog posts I’ve been thinking about for quite a while, one titled “Why do computers make better lawyers than people” and the other – of course – “Why do people make better lawyers than computers”. Real Soon Now!
Further reading:
- Peter Thiel on The Future of Legal Technology - Notes Essay (by Blake Masters)
- Notes from Peter Thiel’s CS183 Startup class at Stanford (by Blake Masters)
- Syllabus for the Stanford Legal Technology and Informatics course
- Course reader for the same
Thursday, 8 November 2012
Happy World Usability Day!
Today, November 8th, is World Usability Day, arranged annually since 2006. List of events here (although if you are interested in events near you, the map on the front page is much more usable), there’s even one here in Helsinki).
If you only know usability from real-world usability, or more likely the lack of it (good usability is unobtrusive), here are the standard definitions:
Of course I’ll also take the opportunity to mention my paper titled Software Usability and Legal Informatics (draft paper on SSRN) which I will be presenting later this month at the KnowRight conference. As far as I know, there has been very little earlier scholarship on the topic in legal informatics, but pointers are most welcome. I will be pursuing this line of research further in other articles at least over the next couple of years.
[Update: presentation now available here.]
If you only know usability from real-world usability, or more likely the lack of it (good usability is unobtrusive), here are the standard definitions:
“[Usability refers to] the extent to which a product can be used by specified users to achieve specified goals with effectiveness, efficiency and satisfaction in a specified context of use.” - ISO 9241-11For more information, see The User Experience Professionals’ Association website.
“Human-centered design is characterised by: the active involvement of users and a clear understanding of user and task requirements; an appropriate allocation of function between users and technology; the iteration of design solutions; multi-disciplinary design.” - ISO 13407
Of course I’ll also take the opportunity to mention my paper titled Software Usability and Legal Informatics (draft paper on SSRN) which I will be presenting later this month at the KnowRight conference. As far as I know, there has been very little earlier scholarship on the topic in legal informatics, but pointers are most welcome. I will be pursuing this line of research further in other articles at least over the next couple of years.
[Update: presentation now available here.]
Monday, 5 November 2012
Phantoms, RoboCops and teleportation law - just an ordinary day at an extraordinary conference
About a month ago (oh dear) I had again the pleasure of attending GikII, the world's top most number one conference on geek law, this time at the London campus of the University of East Anglia. I also had a presentation of my own there, with the title "Is Botox® the New Tinfoil Hat? On Mind-Reading, Behavioural Biometrics, and Privacy", with the following abstract:
As an example case I used the AVATAR system in pilot use on the US-Mexican border in Nogales, Arizona, only since a couple of months ago. You can find more info on AVATAR here and here. I do feel the need to point out that I did not want to talk specifically about AVATAR, but about the wider privacy implications of face recognition and other biometric technologies in the long term. And to have a bit of fun while doing it, of course.
Somehow I did however manage to briefly mention an issue I seem to return to in every paper, namely the question of judicial (or in this case administrative) decision support. In the EU, the most general regulation of this issue is in the Data Protection Directive (95/46/EC), Article 15, on automated decisions, which can only be warranted by statute or for the purposes of fulfilling a contract. In either case, the system making automated decision must have a safeguard in the form of human supervision with the possibility to override. A similar regulatory scheme is proposed to continue under the forthcoming Data Protection Regulation, this time in Article 20 titled Profiling.
The requirement for human supervision is of course good and necessary, but it is by no means enough by itself. If a system makes correct judgments 90% of the time, people seem to have the tendency to infer that it is correct the other 10% of the time as well. One absurd example of this kind of uncritical sticking to procedure (without machines!) is the Twitter joke trial, which was also taken up by Ray Corrigan in his GikII presentation.
There are different ways to mitigate this. The obvious one is that, especially in a context where the system's decisions are routinely followed, the error rate could not possibly be allowed to be anywhere near 10%. To be sure, rigorous testing protocols are required. One possibility is also to open up the algorithms for review, which can be done ex ante as a part of an authorization protocol, or, especially in an individual case, ex post, or both.
Still, with Big Dada, neither of these is enough of an answer. Creating rigorous tests for real-life systems of this type is easier said than done, and “cheating” on the test by making sure at least all the known test cases work as they should is only common sense. Carving specific requirements for testing in stone is a surefire way to kill all innovation in this field.
Releasing the algorithms isn't panacea, either. When the systems are developed by commercial companies (ahem), there is considerable reluctance (or at least a hefty price tag) for this kind of openness. In a national security setting it Just Isn't Done. And in any case, the sheer complexity of the task means that access to the algorithm is of no use whatever when you are trying to board a flight but THE COMPUTER SAYS NO.
So what's my answer? Quite simple: require that decision support systems are always constructed to give explicit and, upon request, detailed reasons for their decisions in human-compatible terms, just like in a well-written court decision. This makes it easy for anyone to see if there is something completely off in the inputs or the line of reasoning, and step in and override. It also allows for a more qualitative type of testing, when not only the decision but also its rationale can be included in the evaluation. And when the system does something harmless enough (say evaluates likelihood of confusion for trademarks (smiley)), the rationales can be used for educational purposes.
So is this a case for more regulation? Even if it were, the legislator's track record in this field does not exactly promise any immediate relief. One way to solve this is to let the markets decide, but that requires an educated customer base who knows what to require and why. I guess we'll just have to wait and see.
Biometrics are an old acquaintance for data protection law. However, the legal interest has thus far focused on the use of biometrics for identification purposes only, that is, using them as an unique key giving an individual access to something or tying that individual to other, non-biometric personal data. The role of biometric data as (potentially even sensitive) personal data in its own right has yet to received the same kind of attention. Biometrics can also be used for example for personalized outdoor advertising even without positively identifying its individual target. The technological development is extremely fast, and, as with many emerging technologies, law struggles with keeping up to date.Slides here.
One particularly interesting development is the combination of behavioural biometrics with face recognition. Continuous analysis of facial microexpressions based on the Facial Action Coding System (probably most familiar from the TV drama Lie to Me) is being developed for a number of purposes, such as profiling airline passengers and lie detection. For lie detection and `mind-reading' in general, simple optically based biometrics are at least as reliable (ie. not very, at least at this point) as the more widely known fMRI-based and other neuroimaging methods, while being totally noninvasive and thus easy to deploy without the consent or even knowledge of the data subject, and at a fraction of the cost. This type of use of fMRIs and neuroscience in general is already a hot topic in law, but the same questions should be understood more broadly and without commitment to any specific type or level of analysis or any particular technology. Looking for explanations on the neuronal level just confuses the non-specialist completely, thus lending neuroscience explanations their seductive allure.
And so this season’s fashion tip for all paranoiacs is to swap your tinfoil hat for Botox®, as it paralyses the muscles causing facial microexpressions, thus making the technology unreliable. Anti-facial-recognition makeup, which confuses the system by making specific parts of the face undistinguishable, is of course another possibility.
As an example case I used the AVATAR system in pilot use on the US-Mexican border in Nogales, Arizona, only since a couple of months ago. You can find more info on AVATAR here and here. I do feel the need to point out that I did not want to talk specifically about AVATAR, but about the wider privacy implications of face recognition and other biometric technologies in the long term. And to have a bit of fun while doing it, of course.
Somehow I did however manage to briefly mention an issue I seem to return to in every paper, namely the question of judicial (or in this case administrative) decision support. In the EU, the most general regulation of this issue is in the Data Protection Directive (95/46/EC), Article 15, on automated decisions, which can only be warranted by statute or for the purposes of fulfilling a contract. In either case, the system making automated decision must have a safeguard in the form of human supervision with the possibility to override. A similar regulatory scheme is proposed to continue under the forthcoming Data Protection Regulation, this time in Article 20 titled Profiling.
The requirement for human supervision is of course good and necessary, but it is by no means enough by itself. If a system makes correct judgments 90% of the time, people seem to have the tendency to infer that it is correct the other 10% of the time as well. One absurd example of this kind of uncritical sticking to procedure (without machines!) is the Twitter joke trial, which was also taken up by Ray Corrigan in his GikII presentation.
There are different ways to mitigate this. The obvious one is that, especially in a context where the system's decisions are routinely followed, the error rate could not possibly be allowed to be anywhere near 10%. To be sure, rigorous testing protocols are required. One possibility is also to open up the algorithms for review, which can be done ex ante as a part of an authorization protocol, or, especially in an individual case, ex post, or both.
Still, with Big Dada, neither of these is enough of an answer. Creating rigorous tests for real-life systems of this type is easier said than done, and “cheating” on the test by making sure at least all the known test cases work as they should is only common sense. Carving specific requirements for testing in stone is a surefire way to kill all innovation in this field.
So what's my answer? Quite simple: require that decision support systems are always constructed to give explicit and, upon request, detailed reasons for their decisions in human-compatible terms, just like in a well-written court decision. This makes it easy for anyone to see if there is something completely off in the inputs or the line of reasoning, and step in and override. It also allows for a more qualitative type of testing, when not only the decision but also its rationale can be included in the evaluation. And when the system does something harmless enough (say evaluates likelihood of confusion for trademarks (smiley)), the rationales can be used for educational purposes.
So is this a case for more regulation? Even if it were, the legislator's track record in this field does not exactly promise any immediate relief. One way to solve this is to let the markets decide, but that requires an educated customer base who knows what to require and why. I guess we'll just have to wait and see.
Guest post at VoxPopuLII
I had a guest post on my research in general on the VoxPopuLII blog of the Legal Information Institute at Cornell Law a couple of weeks ago.
Monday, 24 September 2012
It's alive!
This blog has been a bit (too much) on the quiet side the past months, but at least we have plenty of good excuses. First of all, at these latitudes, summer is a convenient all-around excuse, and not just in Finland. But more importantly, both of us have experienced some professional mobility around August. Anniina has taken a sabbatical from her position at the university, and is now working as the secretary of the Finnish Copyright Council, an independent entity performing an advisory function under the Ministry of Education and Culture. (This obviously somewhat restricts her ability to comment on ongoing and past cases, but hopefully not too much so.)
And as for myself (Anna), I have been busy with a start-up company specialized in intelligent legal technology in the field of trademark law that I co-founded with some other people earlier this year. (Less vague version coming up in October...) The company is called Onomatics and the beta version of our first product went live today. The product is an intelligent trademark analysis system for the time being usable as a trademark database but more to come later, and it is largely based on the work I have done on MOSONG starting over ten years ago. You can read more about Onomatics on the Onomatics blog (design still under construction...), on this blog I’ll try to keep the pitching (as opposed to bitching) to a minimum and focus here on the researchy stuff instead.
Still, this move has also resulted in something of a shift in my own research interests. Now, for obvious reasons, I’m paying a lot more attention to the (local) start-up scene in general and (worldwide) legal start-ups in particular. A related question in this context is the commercialization of the fruits of academic basic research in general, and as someone who has earlier worked for ages at a company founded for that specific purpose and still continuously struggling with the whole idea, I certainly might have a thing or two to say about it and some authority to stand behind my words as well.
Another more indirectly related topic is Usability. My continuous participation in the design process at Onomatics together with having to use the alternatives provided by OHIM, USPTO et al on a daily basis has been something of an eye-opener as to how crufty those services really are. (BTW, my favourite piece of this kind of legacy cruft is the Logout button in TESS.) Coincidentally, Usability and software procurement in general have now also become hot political topics in Finland with the plans to replace all the medical record and other related data systems in one ginormous EUR 1.8bn (budgeted) project, and just in time for the upcoming municipal elections. The cost of bad usability in the health sector has already been pointed out by the National Audit Office as well. Although I have mostly just followed the local debate, these questions are certainly relevant all over the world, and I would certainly appreciate any pointers to earlier work in this field in a legal informatics or regulatory context.
And as for myself (Anna), I have been busy with a start-up company specialized in intelligent legal technology in the field of trademark law that I co-founded with some other people earlier this year. (Less vague version coming up in October...) The company is called Onomatics and the beta version of our first product went live today. The product is an intelligent trademark analysis system for the time being usable as a trademark database but more to come later, and it is largely based on the work I have done on MOSONG starting over ten years ago. You can read more about Onomatics on the Onomatics blog (design still under construction...), on this blog I’ll try to keep the pitching (as opposed to bitching) to a minimum and focus here on the researchy stuff instead.
Still, this move has also resulted in something of a shift in my own research interests. Now, for obvious reasons, I’m paying a lot more attention to the (local) start-up scene in general and (worldwide) legal start-ups in particular. A related question in this context is the commercialization of the fruits of academic basic research in general, and as someone who has earlier worked for ages at a company founded for that specific purpose and still continuously struggling with the whole idea, I certainly might have a thing or two to say about it and some authority to stand behind my words as well.
Another more indirectly related topic is Usability. My continuous participation in the design process at Onomatics together with having to use the alternatives provided by OHIM, USPTO et al on a daily basis has been something of an eye-opener as to how crufty those services really are. (BTW, my favourite piece of this kind of legacy cruft is the Logout button in TESS.) Coincidentally, Usability and software procurement in general have now also become hot political topics in Finland with the plans to replace all the medical record and other related data systems in one ginormous EUR 1.8bn (budgeted) project, and just in time for the upcoming municipal elections. The cost of bad usability in the health sector has already been pointed out by the National Audit Office as well. Although I have mostly just followed the local debate, these questions are certainly relevant all over the world, and I would certainly appreciate any pointers to earlier work in this field in a legal informatics or regulatory context.
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.)
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
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:
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)
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.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.
(from Advocate General Bot's Opinion or draft judgement)
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.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:
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.
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.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.
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.
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)
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