Emma Pitcher

© Boult Wade Tennant 2012

UK and EU Perspectives:Madrid Protocol and the Nice Agreement, post-IP TRANSLATOR - what happens now?

Madrid Protocol

• Filing treaty, not substantive harmonisation• National treatment• As of July 13, 2012 86 members of Protocol• 56 members of Agreement• Protocol more user friendly• Major economies members• Major economic indicator• China 1/12/95• UK 1/12/95 (UK and Isle of Man - not the channel

Islands)

Madrid Protocol continued

• All existing EU members late 1990s early 2000s• Now all except Malta• Japan 14/03/00• USA 2/11/03• EU 1/10/04 • Latest member Philippines 25/06/12• INDIA ?• List available -

http://www.wipo.int/madrid/en/members/

Qualification

• May be filed only by a natural person or a legal entity • Real and effective industrial or commercial

establishment or • Is domiciled in, or is a national of a country which is

party to the Madrid Agreement or the Madrid Protocol or

• Who has such an establishment in, or • Is domiciled in, the territory of an intergovernmental

organization which is a party to the Protocol, or

Qualification continued

• Is a national of a Member State of such an organization ( e.g. the EU – thus a Maltese application cannot be used by a Maltese qualifying person to file a Madrid Application – would need to use a CTM)

• Cannot be used by a person or legal entity which does not have the necessary connection, through establishment, domicile or nationality, with a member of the Madrid Union

• Nor can it be used to protect a mark outside the Madrid Union

Application ProcessAPPLICATION FILED

INTERNATIONAL REGISTRATION ISSUED AND PUBLISHED

REGISTRATION EXAMINED BY THE NATIONAL REGISTRIES OF EACH OF THE DESIGNATED COUNTRIES

RE-EXAMINATION OF REGISTRATION IN

DESIGNATED STATE

RENEWAL

FILE RESPONSE TO OBJECTIONS RAISED

NOTICE OF REFUSAL OF PROTECTION ISSUED FOR

DESIGNATED STATE OR NOTICE OF ALLOWANCE

PROTECTION ACCEPTED FOR DESIGNATED STATE

NO LOCAL PUBLICATION

ACCEPTANCE PUBLISHED LOCALLY

10 years

Approximately 12 - 18 months

Filing Date

Approximately 3 months

Result

• Much cheaper than national applications• Bundle of national rights• Central administration of portfolio – renewals,

assignments etc• Extend to new jurisdictions which subsequently join

Madrid• Extend to other jurisdictions as needed• Popular with brand owners

Nice Agreement

Nice Agreement Concerning the InternationalClassification of Goods and Services for thePurposes of the Registration of Marks (1957)• Concluded in 1957• Revised Stockholm in 1967, Geneva in 1977,

amended 1979• Internationally agreed system• “International Classification of Goods and

Services”

Nice Agreement continued

• Administered by WIPO• Now in 10th edition (2011)• In force from 1 January 2012 • Only 83 States are party - but used by at least 147

States• Plus WIPO• African Intellectual Property Organization (OAPI) • African Regional Intellectual Property Organization

(ARIPO)

Nice Agreement continued

• Benelux Organisation for Intellectual Property (BOIP)

• Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)

• Significant non parties to the Nice Agreement include:- Canada, Thailand and Vietnam

• 2 parts• Part 1 - 2 alphabetical lists 1 for goods 1 for

services

Nice Agreement continued

• Part 2 - classes in numerical order and goods and services in alphabetical order in each class

• 45 classes of goods and services• Broadly similar categories form each class• 1-34 = goods• 35-45 = services

Purpose

• Administrative tool• Legally important• Determines extent of rights granted by registration• Classification incorrect or too vague• Consequences for validity of registration• Unclear rights• Potential for attack

OHIM v UK Approach tension

• OHIM’s practice set out in Communication No 4/03 of the President of the OHIM

• “Use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within that particular class”

• Class heading = all goods and services in that class

• Class heading specifications common• Very broad rights with no clear definition

OHIM v UK Approach tension

• Some class heading terms are clear e.g. Clothing, Footwear, headgear

• Others are not, for instance:• Small metal items in class 6• Machines in class 7• Goods (not included in other classes) of wood or of

plastics in class 20• Office functions in class 35• Personal and social services rendered by others to meet

the needs of individuals in class 45 (the mind boggles)

OHIM v UK Approach continued

• UKIPO’s class headings are general indications relating to the fields to which goods or services belong

• Scope of protection for a registration may only be made by reference to the goods or services covered

• Class heading is irrelevant to interpretation• Means what it says approach• Inconsistent! • Differing results in opposition, cancellation revocation

and infringement proceedings

OHIM v UK Approach continued

• Danger of forum shopping in what should be a harmonised IP system

• UKIPO example – FOUR SEASONS – Class heading Class 20 Furniture, mirrors,

picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics

OHIM v UK Approach continued

– OHIM’s approach would allow this specification to protect a registration for sleeping bags in class 20 even though the mark may not be distinctive for such goods

– UKIPO test is whether the specification is such that permit an average person engaged in the relevant trade to clearly ascertain the nature of the goods or services…without the need for further explanation

OHIM v UK Approach continued

– UKIPO would not grant a registration for 4 SEASONS for this specification and for the actual goods it would be refused

– However UKIPO would be bound to accept the validity of a CTM registration as an earlier right in proceedings before it – not in the public interest

OHIM v UK Approach continued

• In 2011 17 of the 26 then EU Offices means what it says

• 9 offices including OHIM class heading covers all• Significant confusion for applicants as lists of

goods and scope of registration interpreted differently

• Differing outcomes in the same case• Danger of forum shopping and distortion of relative

rights in the single market

OHIM v UK Approach continued

• Basic tenet of TM protection i.e. definition scope of rights never before clarified

• Parallel with case law on what can be a trade mark e.g. LIbertel, Seickman, etc?

• E.g. specifications shoul dbe fixed, lend clarity and precise, accessible, etc

IP TRANSLATOR – an attempt to clarify

• UK Application for IP TRANSLATOR filed for class heading of Class 41: “education; providing of training; entertainment; sporting and cultural activities”

• UKIPO objected - lacks distinctiveness and descriptive as “translation services” fall under Class 41 (note not following practice)

• Appealed up to Court of Justice of the European Union

IP TRANSLATOR continued

• Court ruled that goods and services must be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on the basis of the specification alone, to determine the extent of the protection sought

• The use of class headings may be sufficient• This has to be interpreted by the OHIM and the national

offices• So far the UK IPO has remained silent and other EU

registries look to it for guidance• Its practice may be re-stated but does not need to change

New OHIM practice

• See Communication No 2/12 of the President of the Office of 20/06/12 (entered into force as of 21/06/12)

• For new CTM applications, where the class heading is used Applicant must state, by way of a declaration to be filed with the application, whether all goods/services in the alphabetical list are to be covered (rather than all goods/services in that class)

• However, the alphabetical lists do not cover every item that could fall under that class

• OHIM database will state if the list is covered

Class 39 example

• Class heading for 39 is: “Transport, packaging and storage of goods; travel arrangement”

• If declaration is filed, the application will also cover:

Transport

Packaging and storage of goods

Travel arrangement

Air transport

Aircraft rental

Ambulance transport

Armored-car transport

Arranging of cruises

Arranging of tours

Barge transport

Boat rental

Boat storage

Boat transport

Booking of seats for travel

Bottling services

Brokerage (Freight —)

Brokerage (Transport —)

Bus transport

Canal locks (Operating —)

Car parking

Car rental

Car transport

Carting

Chauffeur services

Coach (Motor —) rental

Coach (Railway —) rental

Courier services [messages or merchandise]

Cruises (Arranging of —)

Delivery (Flower —)

Delivery (Message —)

Delivery of goods

Delivery of goods by mail order

Delivery of newspapers

Distribution of energy

Diving bells (Rental of —)

Diving suits (Rental of —)

Electricity distribution

Energy (Distribution of —)

Escorting of travellers

Ferry-boat transport

Flower delivery

Franking of mail

Freight brokerage [forwarding (Am.)]

Freight forwarding

Freight [shipping of goods]

Freighting

Frozen-food locker rental

Furniture (Transporting —)

Garage rental

Goods (Delivery of —)

Goods (Storage of —)

Guarded transport of valuables

Hauling

Horse rental

Ice-breaking

Information (Transportation —)

Launching of satellites for others

Lighterage services

Marine transport

Message delivery

Newspaper delivery

Operating canal locks

Packaging of goods

Parcel delivery

Parking place rental

Passenger transport

Piloting

Pipeline (Transport by —)

Pleasure boat transport

Porterage

Railway transport

Refloating of ships

Refrigerator rental

Removal services

Rental of diving bells

Rental of diving suits

Rental of freezers

Rental of motor racing cars

Rental of storage containers

Rental of vehicle roof racks

Rental of warehouses

Rental of wheelchairs

Rescue operations [transport]

Reservation (Transport —)

Reservation (Travel —)

River transport

Roof racks (Rental of vehicle —)

Salvage of ships

Salvage (Underwater —)

Salvaging

Shipbrokerage

Ships (Refloating of —)

Sightseeing [tourism]

Stevedoring

Storage

Storage (Boat —)

Storage containers (Rental of —)

Storage information

Storage of goods

Storage (Physical —) of electronically-stored data or documents

Streetcar transport

Taxi transport

Tours (Arranging of —)

Towing

Traffic information

Tram transport

Transport

Transport and storage of trash

Transport and storage of waste

Transport brokerage

Transport by pipeline

Transport of travellers

Transport reservation

Transportation information

Transportation logistics

Transporting furniture

Travel reservation

Travellers (Escorting of —)

Travellers (Transport of —)

Truck (Railway —) rental

Underwater salvage

Unloading cargo

Valuables (Guarded transport of —)

Vehicle breakdown assistance [towing]

Vehicle rental

Warehouses (Rental of —)

Warehousing

Water distribution

Water supplying

Wrapping of goods

And

Existing CTM applications/registrations

• If filed before 21 June 2012 to cover class heading deemed to cover all goods/services in that class

• This practice could be open to challenge• Perpetuates the inconsistencies that IP

TRANSLATOR had hoped to smooth out

UK practice

• Is unlikely to change• UKIPO has always required specificity• Other EU registries look to the UK• See June 2012 IP C & C Cooperate and

Convergence published by the OHIM• Proposed a new common practice and “there is a

commitment to…a consistent means-what-it-says interpretation/acceptance of the Class Scopes”

What this means for brand owners

• OHIM’s Communication No. 2/12 is an awkward half-way house

• Still inconsistencies in what should be a harmonised system• Forum shopping• Problematic for single market – anti-competitive• Searching for new marks, carefully review specification of

relevant CTM disclosures• Determine whether filed before or after 21/06/12 if CTM’s –

affects scope• Check older specifications ensure do not cover unclear and

imprecise terms

Thank you and any questions?