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MARQUES leaving its fingerprint on the interpretation of class headings

Yesterday evening, MARQUES, an association of worldwide brand owners that is an accredited organisation before the OHIM (cf. OAMI Users’ Group) and observer at the OHIM Administrative Board, has made a noteworthy move as it offered its interpretation of the conclusions to be drawn from the final judgement of the CJEU in case C-307/10 IP TRANSLATOR (see earlier report) in an open letter sent to the national IP offices of all EU member states, the Benelux IP office, and the Office for Harmonisation in the Internal Market itself. The letter is undersigned by Nunzia Varricchio, Chair of MARQUES Council, and my partner Jochen Höhfeld, Chair of MARQUES Trade Mark Law and Practice Team.

As already summarised here, the trademark application ‘IP TRANSLATOR‘ was launched as a test case by the Institute of British Patent Attorneys (CIPA) to obtain a review of OHIM‘s practise as to the meaning of class headings by the CJEU. The national UK trademark ‘IP TRANSLATOR’ was claimed for ‘Education; providing of training; entertainment; sporting and cultural activities’, i.e. the class heading of Class 41 of the Nice Classification. The UK IPO refused the application on the basis of Article 3(1)(b) and (c) of Directive 2008/95 and OHIM Communication No 4/03, according to which the trademark covers all services falling within Class 41, so that the trademark was considered lacking distinctive character and being descriptive in nature for “translation services”, which also falls within Class 41. The subsequent appeal to the referring court raised that the application did not specify, and therefore did not cover, translation services. The issued decision appears quite clear on this problem, as it clarifies

  • that the goods and services must be identified with sufficient clarity and precision to enable third parties, on that basis alone, to determine the extent of protection;
  • that the general indications of the class headings may be used provided they are sufficiently clear and precise; and
  • that, if (all general indications of) a class heading is used, this will not be considered to cover the entire class if this is not considered sufficiently clear and precise (no. 62). In this case, the applicant would have to specify the goods and services further.

Thus, the CJEU clearly voted for the means-what-it says approach.

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Emblem of the Council of the European UnionAs already reported in my earlier posting, the European Union is just about to sign ACTA, the Anti-Counterfeiting Trade Agreement negotiated between the European Union and its Member States, Australia, Canada, Japan, the Republic of Korea, the United Mexican States, the Kingdom of Morocco, New Zealand, the Republic of Singapore, the Swiss Confederation and the United States of America. ACTA is a proposed plurilateral agreement for the purpose of establishing international standards on intellectual property rights enforcement.

Yesterday, the EU Council has published Document 12192/11 conveying a draft Decision saying that the President of the Council (i.e. Mr Herman Van Rompuy) shall be authorised to designate the person(s) empowered to sign the Agreement on behalf of the Union. Moreover, the Official text of ACTA has been published with Document 12196/11.

It is to be understood that this text is a Draft only; however, the formal adoption thereof surely will go through on one of the next sessions of the EU Council. However, afterwards that matter will be dealt with in the European Parliament as well as in each of the EU Member States.

ACTA is debated controversially because of the secrecy of some of the negotiation rounds. Moreover, there are doubts as to if ACTA is compatible with EU Acquis Communautaire; see my earlier posting there.

ACTA was born out of the frustration of the major industrialised economies with progress on monitoring and norm-setting on the enforcement of intellectual property rights in multilateral fora. In the WTO Council for TRIPS (‘TRIPS Council’), Brazil, India and China have consistently blocked the inclusion of enforcement as a permanent agenda item. At the World Intellectual Property Organisation (WIPO), enforcement issues were relegated to a purely advisory committee.

One of its features is the creation of another institutional structure in the field of Intellectual Property law besides WIPO and WTO, i.e. the ACTA Committee provided for in Article 36. This Committee will be entitled to:

  • review the implementation and operation of ACTA;
  • consider matters concerning the development of ACTA;
  • consider any proposed amendments to ACTA;
  • decide upon the terms of accession to ACTA of any Member of the WTO; and
  • consider any other matter that may affect the implementation and operation of ACTA.

The Committee may decide to:

  • establish ad hoc committees or working groups to assist the Committee in carrying out its responsibilities or to assist a prospective Party upon its request in acceding to ACTA;
  • seek the advice of non-governmental persons or groups;
  • make recommendations regarding the implementation and operation of ACTA, including by endorsing best practice guidelines related thereto;
  • share information and best practices with third parties on reducing intellectual property rights infringements, including techniques for identifying and monitoring piracy and counterfeiting; and
  • take other actions in the exercise of its functions.

Perhaps, on EU level  the function of the ACTA Committee should also be discussed in relation to the planned new compentences of OHIM in the field of IP enforcement.

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