The IP TRANSLATOR decision (hereafter
the IPT decision) highlighted the duality,
problems and limitations associated with i)
the coexistence of national trade marks
and practices and ii) Community trade
marks and practices. Nearly one year
later, what have been the impacts and
changes in today's practice?
The Issue
The IPT decision concerned the definition
and contents of general class headings:
should we apply a literal interpretation
(whereby the class heading would include
all products and services that fall naturally
into a general category) or a broad
interpretation (where the general class
heading would include the entire
alphabetical list of a given class)?
The issue concerns whether or not to
include isolated products under a general
class heading - i.e., one or more products
that do not match the natural definition of
a general class heading - or one or more
products that relate (or not) to the
general spirit of a given class.
The Rules of the Game
On 16 June, 2003 OHIM Communication
04/03 stated that "the use of class
headings constitutes a claim for protection
of all products and services pertaining to
the respective class".
This had gone unnoticed by the examiners
at the Office who continued in practice to
apply a literal interpretation to the general
class headings.
OHIM was compelled and forced by the
IPT decision to redress the situation. In
Communication 02/12 the Office con-
firmed that, before the IPT, in using a
given class heading "the applicant's intent
was to cover all products and services
included in the alphabetical list of the said
class". It also stated that it is essential that
the actual protection of the mark reflects
the applicant's intent.
A "magic" tick-box is thus provided for
applicants on the electronic application
form to claim protection for the entire
class in just one click.
The French Office took a stance on this
issue and reminded applicants that "the
wording, and nothing but the wording"
was the limit within the trade mark
application system, and that there is no
room for isolated products if these do not
clearly reflect the applicant's intent.
So, here in France, we were supposed to
deal with a two-tier system: the OHIM
system on the one hand and the INPI
system on the other.
Impact
1. Oppositions
The major consequences of the IPT
decision are best reflected in opposition
procedure as here applicants found
themselves facing a three tier system.
The outcome of an opposition proceeding
actually differs depending on whether the
decision was rendered before the IPT,
after the IPT on a CTM filed before the
IPT decision, or after the IPT decision,
based on a CTM filed after the IPT
decision!
The major risk induced by the IPT
decision would be to file a great number
of oppositions against a multiple-page
description.
As the taxonomy was banned by OHIM
and is a simple informative tool deprived
of any legal effect, the only solution would
be that OHIM publish a list of the isolated
products per class to avoid opposition
proceedings with endless argumentations.
2. Availability Search
The impact of IPT decision on availability
searches is more limited since it occurs in
the unusual case where an applicant
wishes to file a CTM for "isolated
products" or similar products, and where
it is necessary to evaluate the risk of
facing opposition, invalidity or cancellation
actions before OHIM.
A CTM fililng claiming protection for a
general description and filed before the
IPT decision will be considered as a
priority for one trade mark project.
However, the same trade mark will not
necessarily have priority if filed after the
IPT decision.
3. Revocation for non-use
If the owner of a trade mark wishes to
obtain maximum protection and claims
protection for an entire class, this decision
may turn against him at the end of the
fateful 5-year period.
The stakes are high, as the said owner
could eventually lose all protection for
products he would need to manufacture
one day...
4. Filing
Here, over-stretching oneself could have
fateful consequences.
Only well-balanced specifications that are
not too broad or precise will ensure
optimum protection. Also a specification
giving broad protection at the time of
filing may eventually reduce the owner's
rights to an absolute minimum after 5
years.
Filing an application for the general
category of the products of interest, and
possibly the isolated products, may be an
option to consider but this requires a case
by case analysis.
5. Renewal
Particular interest must be paid in the
case of renewal of CTMs that claim
protection for a general specification.
OHIM did not take this opportunity to
require the owner to provide any
information at the time of renewal to
specify the scope of his trade mark
specification by asking whether the
renewal applies to all products/services or
only to the general description according
to its literal interpretation.
6. Conversion of a CTM into a
national trade mark
No Office has yet rendered a decision on
this. However, the French Office will
apply its literal interpretation to CTMs.
This is where the divergence of
interpretation between Offices takes on
its full meaning!
A CTM filed before the IPT decision and
claiming protection under a general
description should be given a broad
interpretation. Yet the French Office will
go for a literal interpretation and should
thus reject the insertion of "isolated
products" in the specification.
Given that the French Office totally
rejects the statement whereby the
applicant intends to protect the entire
class of interest, what will be the position
of the French Office when it comes to
converting such CTMs?
Conclusion
At first glance, one may well ask "What is
all the fuss about?"... All this for "isolated
products"? The aim of IPT decision was to
fulfil an urgent and substantiated legal
requirement, but it did not establish the
general framework that was necessary in
view of the implications, uncertainties and
risks, or even the dangers that have
resulted from this decision and will no
doubt continue to generate for
practitioners.
IP TRANSLATOR: the new very bad trip
By Elisabeth BURST and Camille DRABER, INLEX IP EXPERTISE, France
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