ECTA Round Table Session Brand owner life before and after IP Translator Alicante, 21 February 2013

Transcription

1 Brussels, 28 February 2013 Brand owner life before and after IP Translator Alicante, 21 February 2013 Reported by Ewa Grabiak, ECTA Legal Coordinator, PL At the occasion of the annual ECTA-OHIM meeting, ECTA organised a workshop dedicated to the consequences of the decision of the European Court of Justice in the IP Translator case. The idea was to bring together the representatives from the National Offices as well as the representatives from OHIM and practitioners to share their respective experiences. Our Round Table Session brought together the following speakers: Imre Gonda; Deputy Head, Trade Mark and Design Department at the Hungarian Office (replaced further by Fabio Angelini); Bill Trott, Head of Examination Practice and Policy at the UK IPO; Dimitris Botis, Deputy Director for Legal Affairs at OHIM and André Pohlmann, Legal Practice from OHIM. ECTA was represented by Andreas Renck, Franc Enghardt and Anette Rasmussen. The session was attended by 85 participants. Andreas Renck welcomed the participants and presented the programme of the session. The workshop was divided in two panels. The first panel was entitled How does IP Translator affect the practice? OHIM and National Office s perspective. André Pohlmann from OHIM was the first speaker. He reminded that the IP Translator influenced significantly the daily practice at the Office. How did the Office implement the decision? To answer that question André focused on 3 points: - Situation before the judgment; - Reaction of OHIM; - Tick-box. The situation before the decision may be compared to the statement Eat as much as you can. The judgment was delivered on 19 June. The Office released on 20 June the Communication 2/2012, which concerns the use of class headings for CTMs/CTMAs. It is the implementation of the IP Translator decision. The previous OHIM practice (class heading covers all) has been abandoned and therefore the Communication 04/03 became out of date. Since the Communication 2/2012, OHIM started to interpret class headings on the basis of a literal approach. ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/ Fax 32/ ecta@ecta.org Internet A company limited by guarantee. Reg. in England and Wales No Registered address: Suite 1.3, Vernon House, Sicilian Avenue, London, WC1A 2QH, England VAT No. BE

2 The Communication 2/2012 established the distinction between: Trade marks registered on 21/06 - OHIM considers that applicant intended to cover alphabetical list (Nice edition of filing date); Pending trade marks - OHIM considers that applicant intended to cover alphabetical list unless he specifies that protection is sought only for some goods/services; Trade marks registered after 21/06- Applicant has to indicate expressly that he wants to cover the full alphabetical list. If this intention is not expressed: literal meaning of class heading terms Approach of the tick box. André Pohlmann reminded that the Office cannot influence the past practice, and can only influence the future practice. The applicants have legitimate expectations regarding the procedure. He also added that the judgment of 31 January 2013 explicitly makes reference to the Communication 02/2012. Specifically regarding the CTMAs filed after 20/06, Office launched an open consultation. Three options were proposed: Publish class heading plus declaration (the applicant herewith seeks protection for all terms of the alpha-list); Publish class heading plus those terms which cannot be covered under the literal meaning of a general indication (e.g. translation services); Publish class heading plus full alpha-list. The option Publish class heading & all terms of alphabetical list was privileged. 2

3 Since 15 October 2012 the approach based on e-filing tick box is applicable. It is not possible anymore to attach declaration. It is true that this solution is complex, but there is no obligation to use it. Fortunately it is an interim solution. The Office is currently working with the National Offices on the long-term solution in the Taxonomy project. The second speaker was Imre Gonad from the Hungarian Office. Unfortunately due to the exceptional circumstances he couldn t attend the workshop. Fabio Angelini replaced him. The presentation contained 3 main points: Introduction Relevant points of the judgement Aftermath and interpretations In the introduction Fabio Angelini explained that the European and National systems coexist, therefore the various interpretations may occur and be the source of confusion. The heart of the problem is the choice between the literal approach and the Class Heading covers all. Therefore the practice may diverge. The divergence may have numerous consequences and namely: no direct conflict in the era of national trade marks (principle of territoriality); expansion of international registrations and introduction of CTM resulted in interfaces and conflicts of interpretations; direct effect on the scope of protection; different outcome of similar procedures for identical trade marks clearly detrimental; enforcement matters. 3

4 Therefore 3 questions must be asked: 1. Is it necessary for the various goods or services covered by a trade mark application to be identified with any, and if so what particular, degree of clarity and precision? As stated in the judgment, the terms in the specification should be clear and precise. What should be the level of clarity and precision?: sufficient [47] Let s remind some further details in this respect: aim of public register: extent of protection should be accessible for authorities and public [46] use of general terms to describe goods and services can be sufficient [45]. In other words, the terms in the specification should be sufficiently clear and precise, which means enough to determine the extent of protection from the perspective of authorities and economic operators. 2. Is it permissible to use the general words of the class headings of the [Nice Classification] for the purpose of identifying the various goods or services covered by a trade mark application? There is no obligation or prohibition on the use of general indications, however indication should meet the requirements of clarity and precision; some general indications are sufficiently clear while others are not; competent authority should make the assessment on a case by case basis. Here is the area of convergence for IP offices. 3. Is it necessary or permissible for such use of the general words of the Class Headings of [the Nice Classification] to be interpreted in accordance with Communication No 4/03...? The applicant who uses all terms of Class Heading must specify its intention. If the intention is not referred to, than the specification of application is not sufficiently clear and precise. The conclusion is that the intention of the applicant is decisive and not the interpretation or practice of the office. The second representative from the National Office was Bill Trott. He explained that the UK IPO will continue to apply the approach means what it says 1, therefore there won t be any 1 (2) Every application shall specify- (a)the class in the Nice Classification to which it relates; and 4

5 change of the practice in this respect. The UK IPO will accept Class Headings on means what it says, except where terms "vague". The UK IPO considers that the IP Translator may be the source of the inconsistent examination and inconsistent interpretation on scope in relative grounds cases; and the confusion for business. The solution is the convergence, which can be achieved through the harmonization and confirmed by the legislative change. The last speaker of the first panel was Dimitris Botis from OHIM. He reminded that OHIM is currently in the process of reaching an agreement with the National Offices. The last meeting in this respect took place on 4 and 5 December The current situation is that there are terms which are acceptable for some Offices while other Office refuse them as being too vague. The outcome of the December meetings may be resumed as follows: 1. Interpretation of class headings: Post-IP Translator: - Filing practices of other offices are accepted; - There is a general consensus according to which class-heading-covers-all approach is not appropriate anymore; - Clear preference to reflect individual alphabetical list terms / not only declarations; - WIPO does not accept declarations (WIPO Information Notice of 23/11/2012). Pre-IP Translator: - No agreement reached yet / National Offices that have always followed means-what-it-says approach cannot accept any interpretation that gives class heading a broader scope of protection than what is reflected in register; - Possible solutions for registered CTMs: legislative change / individual letters to owners asking them to specify their intention (= INTA proposal). 2. Imprecise general indications: - OHIM and National Offices are working on a list of non acceptable general indications; - Once this list exists all offices will follow the same approach; - Registered imprecise terms will be left untouched in the register. 3. Common Communication: - Objective of communication: transparency for users; Document contains overview of how each office interprets IP Translator. (b)the goods or services which are appropriate to the class and they shall be described in such a way as to indicate clearly the nature of those goods or services and to allow them to be classified in the classes in the Nice Classification. r. 8(2)(a) and (b) of the Trade Marks Rules 2008 (as amended) 5

6 The long-term goal is the common practice, which is the guarantee of: Legal certainty: the same approach in all member states; Predictable decisions; Consistent decisions throughout the EU. Dimitris Botis concluded that these three factors will lead to a strengthening of the EU trade mark system. The Office is currently working with national offices on the Taxonomy, the new practice endorsed at the last Administrative Board in November 2012 and which allow to choose exactly the level of abstraction the applicants need. The official Office s communication in this respect is expected for March The second panel was destined to the legal professionals. Anette Rasmussen was the first speaker. She explained how the IP Translator affected the professionals in their relation with the client. Every client is different. Some of them have extensive knowledge of TMs and the others don t. They have also different needs regarding the trade mark they want to protect. Some of the will want to obtain as broad a scope of protection as possible. There are many good reasons for wishing as broad a protection as possible. Most of them are related to cost issues, as this is an important parameter to the clients. If the client is uncertain of the precise product, it may be good to use broad terms. Also, if the client wishes to extend the product range, but is not yet certain of in which precise direction a broad protection is valuable. Not least since you would then be guaranteed protection for the later expansion without having to hold extra costs. And of course the scope of protection will be broad for the first 5 years you keep competitors at bay. At the other end of the scale we have the wish for a very specific list. But when you can have a broad list why would you wish for a specific list? There are many good reasons, against related to the costs. If you know that you will only use the mark for only one product and you limit the list of goods to this one item then you avoid problems with the use requirements. Further Anette Rasmussen explained how the practice of the Danish National Office will change with the IP Translator. Following the IP Translator decision the DK PTO will give the same scope of protection to a CTM as to a national Danish Trade Mark, namely what can be naturally understood by the terms used. In other words, it will apply the means what it says approach. This might be a major change for some trade mark owners, as the DK PTO will not differentiate between CTMs filed or registered before the IP Translator and those filed after the decision. All CTMs will be treated in accordance with this new interpretation. The IP Translator will not solve the problem of the clarity. According to Anette the solution would be looking at the use requirements and when use must be shown. Further, we must not forget that there is a new regulation and directive coming up. Will there be common rules for the classification of goods/services? Probably. But rules are to be interpreted and the interpretation may still vary a great deal. 6

7 Regarding the tick box, Anette stated that this solution should not be allowed, as it too complex and makes the opposition proceedings longer than normally. Another very interesting feature is the convergence program. If we are to have harmonization of practice within the EU then the PTOs and OHIM need to agree on the interpretation. Harmonization would be a good thing for Trade Mark owners. And taxonomy seems to be a good tool for obtaining this. But even Taxonomy and harmonization within the EU does not solve everything, especially in the context of international registration. The last speaker of the workshop was Franc Enghardt. He underlined that the applicant has the responsibility together with his adviser to provide the clear and precise description of goods and services. The IP Translator judgment states that the competent authorities have obligations in relation to the maintenance of a precise register of trademarks. 2 But what could the statement about the responsibility of the national offices entail? For example, the Benelux Office of Intellectual Property used to adapt the list of goods and services in line with changes in the classification policies upon renewal of Benelux registrations. This practice was stopped in a drive to be more efficient in dealing with renewals. However can an applicant expect the competent authority to review the list of goods and services in the course of renewal? 2 Court of Justice IP Translator, case C-307/10, paragraph 47. 7

8 The ECJ requires more clarity and precision for lists of goods and services in order to have an appropriate and precise register. The practice of including the entire alphabetical list defeats this purpose, so why not let the applicants describe their own goods and services as much as possible in their own words, in which the alphabetical list is just a helpful tool? The applicants should not be forced to use proposed wording or to reward such use for the sole purpose of having an efficient and cost-effective filing process. He concluded that the IP Translator judgment gives answers but also leaves us with questions. Trade mark applications, but also registrations, will have to be examined on a case-by-case basis in order to establish whether the list of goods and services is clear and precise enough to consider the application/registration valid and enforceable. 8