Trade mark registrations for Nice class headings: IP TRANSLATOR top-up

In the fleeting world of the intellectual property blogosphere, few topics have demonstrated such staying-power as the troubled issue of the use of Nice class headings to indicate the range of goods and services for which a trade mark applicant in Europe seeks protection through a trade mark's registration. The new reader, who may never before have stumbled across this topic and who may wonder what the background is, can peruse any number of Katposts which discuss the IP TRANSLATOR ruling of the Court of Justice of the European Union.  The case illustrates the issue quite neatly since it addresses a simple problem: should an application to register the word mark IP TRANSLATOR for 'education; providing of training; entertainment; sporting and cultural activities' in Class 41 of the Nice classification be allowed, or is it descriptive?  The applicant has not apparently sought registration of the mark for translation services, since they do not appear to be 'education; providing of training; entertainment; sporting and cultural activities'. However, those words are the class heading for Class 41 services, and 'translation' is one of the sub-headings. 

The IPKat is fortunate to have as a friend the enthusiastic Richard Ashmead, a patent and trade mark attorney who has dedicated some of the best years of his life to the pursuit of a workable and sensible solution to this problem which, like all good problems, causes more problems every time you come up with a solution to it.  In the following guest post, Richard (katpat!) brings readers up to date:

IP TRANSLATOR top-up

Lest any devotees of IPKAT may have had concerns that my grand obsession with class headings and IP TRANSLATOR matters has lapsed, or has indeed seen me off, I offer these top-up thoughts along with confirmation that I am still much enjoying my semi-retirement in the New Forest within a meaningful walk of the Solent. 

This top-up piece is, as it happens, about top-ups, and hopefully reports movement towards a conclusion of a concern of mine that His Felineness the IPKat himself was good enough to publish here on 21 October 2013 under the title “The new Community trade mark top-up: a call for debate”. The debate I called for was on the European Commission’s proposal in Article 28(8) of its draft Community Trade Mark Regulation (CTMR), providing for CTM class heading registrants to request a top-up of their list of goods beyond the literal meaning of their class heading wordings, thus:

1.    A lot of class XX heading CTMs filed before the June 2012 CJEU judgment on IP TRANSLATOR which may have been filed in the expectation of getting “all goods in class XX” scope. 

2.    The CJEU effectively killed as correct law the OHIM-espoused equivalence of the class XX heading wording and “All goods in class XX”. 

3.    Some argued that the CJEU’s judgment applied only from its June 2012 date, a position roundly scotched (can we say that in these politicised days?) by Geoffrey Hobbs QC in his final decision in the IP TRANSLATOR appeal, thus:

“ … 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”

4.    Draft Art. 28(8) CTMR provided for class-heading CTMs filed before the June 2012 to be extended beyond the literal meaning of the heading of that class, by addition of terms from the relevant Nice alphabetical class list, based on a presumed filing intention to cover those extended goods – the top-up provisions!

5.    My view was, and remains, that such broadening would be impermissible, intended or not, and that the Art. 28(8) CTMR provisions would be ultra vires. 

6.    A big legal concept for a patent attorney, I know, and sadly I am still unable to identify the legal absolute zero of impermissible IP broadening. Curiously though, Art. 40(5) of the Commission’s proposed new Directive says that Nice class heading wordings shall be interpreted according to their literal meaning and not be interpreted outside that, and now seems to carry the addition of “... irrespective of when the trade mark was applied for or registered”

The debate I called for in October 2013 does seem to have taken place in governmental circles, as evidenced earlier in the year by the proposal to add, as Art. 28(8)(a), wording intended to protect third parties infringing as a result of registered scope extended under Art. 28(8), which at least pointed to practical difficulties. There have too been continuing rumours that Art. 28(8) may not survive into the enacted Regulation, dare I possibly think as ultra vires?

My thoughts here were triggered by the publication on 4 July 2014 of a Presidential compromise proposal for discussion by the “Working Party on Intellectual Property (Trademarks)” on 14 July. I don’t know what happened then, nor who makes up this committee, but they are obviously important if the President talks compromise with them. In this compromise Art 28(8) is simply referred to as “Deleted” with a footnote reading 

“HU: would have preferred Option 2 of the previous version of the Presidency compromise proposal (6570/14), i.e. keeping this paragraph plus paragraph (8a) in the text of Article 28”

Has then Art 28(8) and its top-up provisions been disposed of? Maybe (or maybe not) the governmental negotiations are still under way, sadly mostly behind the scenes, but if the proposed top-up provisions are gone I shall feel a mild celebration to be in order, for the removal of one more of the official difficulties created by and around the IP TRANSLATOR judgment.

Thanks, Richard, for this news and analysis. We do appreciate it!