IP Translator perceived by the legal

professionalsDr. Katalin SzamosiECTA MemberAttorney at Law Managing Partner of SBGK Patent and Law Offices

ECTA ROUNDTABLE SESSIONBRAND OWNERS LIFE BEFORE AND AFTER IP TRANSLATOR6 NOVEMBER 2013, BUDAPEST, HUNGARY

The Problem

• UK, Austria, Benelux, Czech, Germany, Denmark, Spain, France, Ireland, Latvia, Poland, Sweden, Slovenia and Slovakia have taken the view that if a specific item does not fall within the literal meaning of the class heading then it is not covered by the application unless the specific item is also listed.

• Community Trade Marks Office (OHIM), Bulgaria, Estonia, Finland, Hungary, Italy, Lithuania and Romania have taken the opposite view and regard the class heading as a claim to all of the goods or services in the Nice Classification even if the specific item is not explicitly mentioned.

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 on that basis alone, to determine the extent of the protection .

Directive 2008/95 must be interpreted as meaning that it 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 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.

Court of Justice in Case C-307/10 Chartered Institute of Patent Attorneys [2012] ECR I-

0000, on 20 June 2012

Communication No 2/12 of the President of the Office of

20/06/2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and

registrations

That communication, which came into force on 21 June 2012, repeals and replaces Communication No 4/03.

Under the first paragraph of Point III of Communication No 2/12:

‘In view of the ... statements by the Court [in Chartered Institute of Patent Attorneys], applicants are not precluded from using the general indications of the class headings to identify the goods and services for which protection is sought, provided that this identification is sufficiently clear and precise.’

Communication No 2/12 of the President of the Office of 20/06/2012

•For new registrations applied as of 22 June 2012

•The first paragraph of Point IV of that communication states: It must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned 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.’

Registration and applications before 22 June 2012

•Under Point V of Communication No 2/12:

•‘As regards Community trade marks registered before the entry into force of the present Communication which use all the general indications listed in the class heading of a particular class, the Office considers that the intention of the applicant, in view of the contents of the previous Communication [No] 4/03, was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.

Practice comments• Where applicants require registration of a

trade mark for all goods or services in a class this must now be expressly stated in the application

• The decision of the CJEU does not explicitly say that the “class heading covers all” approach is incorrect

• The decision of the CJEU does not explicitly apply to Community Trade Marks as they are not governed by the Directive

• The CJEU did not comment on the effect of its decision for existing registrations and applications

• The decision of the CJEU leaves open what are or are not sufficiently clear and precise identifications in class headings

Common Communication on the Implementation of `IP Translator :

2 May 2013

• This Judgment has an influence on the practice of all Trade Mark Offices of the European Union and calls for convergence on the interpretation of the general indications of the Nice Class Headings. Without prejudice to the fact that each Office is bound by its national legislation, national court decisions and, in some cases, previous communications, there is a willingness and a need to collaborate with a view to implementing this Judgment in a harmonised manner in order to provide legal certainty both for the competent authorities and the economic operator

• Trade Mark Offices of the European Union are working together to establish a common understanding of the requirements of clarity and precision in the designation of goods and services and to develop a common set of principles to be applied to their respective classification practices.

• Trade Mark Offices of the European Union are working together to determine which of the general indications of the Nice Class Headings are acceptable for classification.

• Trade Mark Offices of the European Union have created an overview (see Annex ) that provides full transparency on how each Office deals with specific topics relating to the implementation of the Court :s ruling.

Dilemma

• Cost issues? • How to apply for a whole class ?

Tick box or full list?• Amending existing registrations?• Describing the goods and services

via own words or alphabetical list?

European Commission's proposal for the new Community Trade Mark

Regulation (CTMR)'Article 28 Designation and classification of goods

and services

1. Goods and services in respect of which registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (hereinafter referred to as the 'Nice Classification').

2. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought. The list of goods and services shall allow each item to be classified in only one class of the Nice Classification.

3. For the purposes of paragraph 2, the general indications included

in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision.

4. The Agency shall reject the application in respect of indications or terms which are unclear or imprecise, if the applicant does not suggest an acceptable wording within a period set by the Agency to that effect.

5. 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.

6. Where the applicant requests registration for more than one class, the goods and services shall be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class to which that group of goods or services belongs and presented in the order of the classes.

7. The classification of goods and services shall serve exclusively administrative purposes. Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

8. 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.';

European Commission’s proposal for the new Trade

Mark Directive ( TMD)• Article 40 Designation and classification of goods

and services

• mutatis mundis paragraph 1-7 as the proposed Art. 28 CTMR

For ex.: 5. 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.

• No reference on whole Art. 28(8) CTMR as proposed– Inconsistency?– Intentionally left out?

Reaction to the European Commission's proposal for the

new CTMR and TMD• MARQUES

– supports the requirement for sufficient clarity and precision as put forward by the Court.

– Art. 28 (8) would only increase the lack of clarity, thus suggests that it is deleted

• INTA– Supports the adoption of Nice Classification in EU trademark

law, and welcomes IP Translator decision.– Art. 28 (8) gives to short time for transformation, it should be

extended for one year.– Disagree with the word “solely” in the first sentence of Art.

28 (8).• ECTA

– There is an inherent contradiction between Art. 28 (2) and Art. 28 (8) which seemingly cannot be resolved.

– ECTA is also concerned about how the Office will handle the number of incoming declarations, and what this means in terms of legal security.

– Articles do not address the problem of already claimed seniorities/priorities, as well as ignores the issue of lists consisting in a long alphabetical list of a class.

Debate

• What happens if not extension is made within the period set by the Regulation?

• What happens with national trade marks registered or applied for before 22 June 2012?

• How courts would interpret CTMs and national trademarks registered or applied for “class heading covers all” before 22 June 2012 ?

• What legal experts should propose to the clients for new and old trade mark registrations?

• What happens if not extension is made within the period set by the Regulation?

• What happens with national trade marks registered or applied for before 22 June 2012?

• How courts would interpret CTMs and national trademarks registered or applied for “class heading covers all” before 22 June 2012 ?

• What legal experts should propose to the clients for new and old trade mark registrations?

Thank You for Attention

Dr. Katalin Szamosi

(szamosi@sbgk.hu)