How does IP Translator affect the practice?

Transcription

1 How does IP Translator affect the practice? Solace or source of confusion? Péter Csiky head of department Hungarian Intellectual Property Office

2 Keypoints of the presentation Introduction Relevant points of the judgement Aftermath and interpretations 2

3 Introduction ( ) the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks. [Art.2(1) Nice Agreement] Heart of the problem: two different interpretations 1. Literal approach 2. Class Heading covers all [e.g. communication No 4/03 of the Pres.] 3

4 Introduction Consequences of divergent practice: - 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 mark clearly detrimental - enforcement 4

5 IP Translator Questions raised: 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? 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? 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...? - 5

6 First answer: IP Translator - requirement for clarity and precision - - terms in the specification should be clear and precise - level of clarity and precision?: sufficient [47] - aim of public register: extent of protection should be accessible for authorities and competitors[47-48] - use of general terms to describe goods and services can be sufficient [45] Σ: sufficiently clear & precise enough to determine the extent of protection from the perspective of authorities and economic operators 6

7 IP Translator - use of general indications Nice Class Heading - Second answer: - no obligation or prohibition on the use of general indications [50] - indication should meet the requirements of clarity and precision [53] - some general indications sufficient while others are not [54] - competent authority should make the assessment on a case by case basis [55] Σ: area of convergence for IP offices 7

8 IP Translator - use of all general indications of Class Heading - Third answer: - explanation and consequences of two approaches [58] - applicant who uses all terms of Class Heading must specify its intention, - declaration of intention to cover all goods or services contained in the alphabetical list [61] - if the intention is not referred to, than the specification of application is not sufficiently clear and precise [62] Σ: intention of the applicant is decisive and not the interpretation or practice of the office 8

9 Afterlife of the judgment: Aftermath - interpretations - - prediction judgment will settle different interpretations - content of the judgment is complex leaves room for broad interpretations and confusion - judgment is not directly pro or against the two approaches (clarity and precision use of all terms of class heading) - divergent views and interpretations on third answer (all terms + declaration = alphabetical list) this option is not accessible for applicants at a number of IP offices in Europe 9

10 - interpretations - Contra arguments against the third answer: - third answer contradicts the criteria defined in the first it is impossible to apply answers 1 & 2 with 3 together - statement is an optional rule Interpretation of the third answer by HIPO: - guiding principle: intention of the applicant - if in doubt, it is not the office to presume, client should be asked to clarify - use of full text of Class Heading for a particular class clear indication of the intention, inherently not clear and precise [see point 62 of judgment] - the judgment explicitly enables the option of making a statement to Class Heading obligation on offices - point 61 is not an optional element of the judgment this should be clarified 10

11 - changes in the practice (HIPO) - Measures taken by HIPO: - previous practice Class Heading covers all - practice was based on case law approved by court - summary of the judgment published [27 June 2012] - communication on the new practice in relation to the use of Nice Class Headings [9 July 2012] - revision of workflow and relevant part of TM Guidelines - communication of the new practice (user meeting) Σ: HIPO changed its practice 11

12 - changes in the practice (HIPO) - The implementation of IP Translator at HIPO: - terms used in the specification should be sufficiently clear and precise - use of individual Class Heading terms is allowed provided that they are clear and precise - publication of list of non-acceptable Class Heading terms - Nice Class Heading + statement is acceptable - use of full text of Class Heading for a class is in itself not sufficiently clear and precise applicant has to clarify its real intention (official letter will be issued) 12

13 - changes in the practice (HIPO) - Scope of protection of trade marks with IP Translator relevance: Class Heading covers all goods or services in the class Class Heading covers all goods of alphabetical list Class Heading + claim = alphabetical list 1 May 2004 HU accession to EU 19 June 2012 IP Translator 13

14 - implementation of IP Translator - applications filed after 19 June declaration is required if applicant would like to cover the alphabetical list trademarks with filing date earlier than 19 June presumption: Class Heading = the intention of the applicant was to cover the alphabetical list trademarks with filing date earlier than 1 May TM Directive, acqui communautaire had no legal effect 14

15 - implementation of IP Translator - new trade mark applications: - the application form was revised - options of applicant to formulate the specification 1. individual terms (Class Heading terms or others) 2. class heading terms + claim 3. class heading terms + claim + further expressions 4. renewals: no changes ex officio but if proprietor wants, specifications can be modified. 15

16 - implementation of IP Translator - How to reflect the intention of the applicant for the alphabetical list in the register Alternatives: 1. terms of Nice Class Heading + phrase (claim) (all goods/services contained in the alphabelitcal list of the class) 1. automatic transformation of the claim into the full alphabetical list 2. all terms of the relevant Class Heading + full alphabetical list HIPO opted for option 1 16

17 - implementation of IP Translator - Increased number of objections issued by HIPO on formalities (db) 2013(db)

18 - implementation of IP Translator - Further steps to be taken - it would be crucial to agree on a common interpretation of the judgment - in spite of it scope of protection of affected TM s will be interpreted differently and possible results of convergence may be jeopardized - to reach agreement on the list of non-acceptable individual terms of Nice Class Heading - to create harmonized list of terms that are acceptable for classification 18

19 - implementation of IP Translator - Convergence Program CP1 harmonization of TM classification practice of goods and services - final aim: to reach common classification practice - result: agreement on the list of 11 non-acceptable individual terms of Nice Class Heading will be endorsed by the AB in November tool: harmonized database (TM Class, Taxonomy) Convergence Program CP2 convergence of class headings - final aim: reach agreement on the interpretation of class headings - result: common communication on IP Translator judgment, summary of interpretation of IP offices endorsed by the AB, published 2 May

20 - implementation of IP Translator - Revision of the European Trademark System - COM s proposal - Art. 40. of Directive & Art. 28 of CTMR - proposal incorporated the IP Translator judgment quite explicitly, except answer 3. - requirement of clarity and precision - class heading = literal meaning only - general indication of class heading - shall not be interpreted as comprising a claim to goods or services which cannot be so understood class heading + claim = alphabetical list, would not be an option anymore 20

21 - implementation of IP Translator - Further points of conflict - national trademarks with class heading registered before accession to EU interpretation of scope of protection in CTM procedures (opposition, cancellation, seniority) - international registration based on trademarks with IP Translator relevance practice of WIPO Int. Bureau - extension of protection of such int. trademark registrations to the territory of Countries outside of EU - untreatable long specifications, difficult to separate alphabetical list from any additional terms, different editions of Nice classification 21

22 Thank you for your attention!