Classes, clarity and confusion: the legacy of IP Translator

OHIM and the Court of Justice of the European
Union don't have a monopoly of devilry ...

Last week this Kat had a most enjoyable discussion with one of his colleagues concerning the current situation in which Europe's trade mark attorneys find themselves, now that the dust seems to be settling on the curious of the Court of Justice of the European Union in Case C-307/10 Chartered Institute of Patent Attorneys (better known as IP Translator).  Go on, be a devil, said the Kat, put something in writing and I'll post it on the blog.  Well, before the Kat's colleague could decide whether to be a devil or not, the piece which you can below was received from someone who had already decided on a bit of devilry -- Katfriend Désirée Fields (McDermott Will & Emery UK LLP). By coincidence, a number of the issues which were drawn to the Kat's attention last week appear in this piece too.  While one swallow does not make a summer, and even two trade mark practitioners who agree with one another do not constitute Europe-wide consensus, it would be good to know whether the view expressed here by Désirée does indeed reflect the experiences and thoughts of others.

"Clarity and precision -- or even more confusion? 

A few weeks ago I was having lunch with a fellow intellectual property enthusiast who currently has some ongoing disputes with a large international media conglomerate. She often needs to review new Community trade mark applications filed by this company in order to determine whether to take any action against them.  And, according to her, this is apparently by no means an easy task, following the (in)famous decision of the Court of Justice of the European Union in Case C-307/10 IP Translator [on which see Katposts here, here and here] and the subsequent changes which the Office for Harmonisation in the Internal Market (OHIM) made to its trade mark filing system whereby Community trade mark applicants must expressly indicate whether they intend to cover all the goods and services in a particular class or only some of them.  As my lunching companion pointed out, she likes to file oppositions against specific goods and services rather than “throwing in the kitchen sink”. As a result, she had to wade through 25 pages of specification to tease out those goods and services relevant to her case. 

At the time of our lunch, I did not give this much though.  However, recently I have been a bit puzzled by the overwhelming amounts of paper that land on my desk whenever OHIM issues an L-SU01 communication notifying me of a later filed application that one of my clients may wish to oppose. To simplify my life, our paralegal tends to print out the details of the earlier Community trade mark application and the later filed application so that I can compare the two side by side. In the past, this usually amounted to three or four pages.  Recently, however, I am increasingly shocked to see that very frequently specifications of newly filed Community trade mark applications run to significantly more pages.  

I decided to investigate the matter. Logging into MyPage,I quickly discovered that the online filing system is precisely where the problem lies: When selecting a particular class, the field is pre-populated with the class headings.  The applicant is then asked to confirm whether it intends to cover all the goods or services in this particular category.  When the applicant checks the relevant box, a warning pops up 

“Any previous indication of goods/services will be replaced by class heading of the selected class and all goods/services of the alphabetical list of this class.” 

Has the alphabetical list
made mugs of all of us?

Seconds later, the box is populated by a huge amount of terms, consisting of all the terms in the alphabetical list which is imported from EuroClass. From the point of view of third parties examining the Community trade marks register, the spelling out of the alphabetical list is in some ways very helpful: it is clear what goods and services are covered and therefore it makes it easier to assess whether a conflict exists on paper. From the point of view of trade mark advisers who do not operate on a fixed fee basis when carrying out clearance searches or assessing potential oppositions, could this be a potential goldmine of billable time?  If trade mark advisers are carrying out their duties diligently, they will still need to read through every item on the list to ensure that the applicant has indeed covered the entire spectrum of goods and services on the alphabetical list and has not deleted certain items. 

Teaching apparatus
to explain "clothing,
footwear, headgear" 

More to the point, however, is it really necessary for OHIM to list the entire alphabetical list of goods and services even where an applicant intends to cover it in its entirety? Would it not be sufficient for a statement to appear under the class heading stating “This application includes the entire alphabetical list of goods/services in class X?”  This would certainly save hours of wading through lengthy specifications and probably a large amount of forests! 

The other issue with the application form is that it still allows scope for confusion.  If the applicant unchecks the box, it is left again with class headings.  However, because the applicant has not ticked the box stating that it wishes to cover everything in the class, the applicant is clearly not covering the detailed alphabetical list.  In certain classes, such as class 25, the scope of protection would probably still be clear if the applicant allows the class headings to stand without further clarification.  Everyone understands the meaning of clothing, footwear and headgear. In other classes, however, such as the ever-popular class 9, confusion is still likely to be rife.  Does anyone really understand what falls into the scope of “teaching apparatus and instruments”? 

With respect to those businesses like the large international media conglomerate which has opted to include not just class headings but the entirety of the alphabetical list in its recent applications: Is it pure laziness or a cost saving measure to simply tick the box rather than to consider what it actually is for which protection is sought? Or does a media company really require protection for and use its trade mark in relation to chains for eyeglasses and contact lenses? [Another source of potential income for those trade mark advisers five years down the line?]".

Merpel is chuffed to see that Richard Ashmead's fabled passion for issues arising out of classification post-IP Translator is shared by some other members of the trade mark fraternity.