Emma Pitcher © Boult Wade Tennant 2012 UK and EU Perspectives: Madrid Protocol and the Nice...
-
Upload
suzan-french -
Category
Documents
-
view
214 -
download
0
Transcript of Emma Pitcher © Boult Wade Tennant 2012 UK and EU Perspectives: Madrid Protocol and the Nice...
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