Archive | 2013, February | (3) posts

The Cooperative Patent Classification has been launched!

As many will already have noticed the Corporate Patent Classification (CPC), which the AWAPATENT IP Blog has covered previously, has now been launched and taken into use by the EPO and the USPTO.

To recapture in brief, the CPC is based on the latest version of the International Patent Classification (IPC) system. The CPC is divided into sections A through H similar to the IPC as well as an additional brand new section Y inspired by the United States Patent Classification, USPC, and including new technological developments, technologies spanning over several IPC-classes as well as matter previously covered by the US cross-reference art collection.

The launch took place on 1 January 2013, and simultaneously the European Patent Classifiaction, ECLA, was terminated. Thus the CPC has taken the place of the ECLA in e.g. search databases such as Espacenet. Likewise, the intention is to phase out the USPC which has already been frozen, but which may nevertheless still be searched through the USPTO-website.

And to those who may have begun to wonder: Yes, the IPC will continue to exist alongside the CPC. So will by the way the Japanese patent classification system as the JPO has so far not adopted the CPC.

Furthermore, it is now possible for users to acknowledge themselves fully with the CPC, as comprehensive information including i.a. a full table of definitions and concordance table were available on the CPC-website.

In this connection, it is worth noticing that the EPO conducts a CPC user seminar at the EPO premises in Vienna, Austria, on 23 March 2013. For those without the possibility of going to Vienna, an E-learning module is available on the CPC-website.

As for the future, the CPC will be continuously revised, with the first revision scheduled for April 2013. Also, promotion efforts will be made by the EPO and the USPTO to get other IPOs to adopt the CPC.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

New Chinese sub-class

In the 2013 version (in force from 1 January 2013) of the tenth edition of the NICE Classification of Goods and Services inter alia the following was added:  “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies”. Due to this the China Trademark Office (CTMO) at the same date introduced a new sub-class 3509 to cl. 35 in China. Since the CTMO is rather strict in their assessments of both applications as well as possible opposition cases this new sub-class further emphasizes the importance of defining the services that one wish to seek protection for, as an attempt for a wider scope of protection would risk not receiving approval from the authorities.

The sub-class at the moment contains of the following seven new services:

1. Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies

2. Retail or wholesale services for drugs for human use

3. Retail of wholesale services for pharmaceutical preparations

4. Retail or wholesale services for sanitary preparations

5. Retail or wholesale services for medical products

6. Retail or wholesale services for veterinary drugs

7. Retail or wholesale services for veterinary preparations

The first service is obviously identical to the Nice Classification, and the six other services are further specifications of the first service. The CTMO has stated that the above mentioned services are considered similar and dissimilar in the following way. Service 1 which apparently has a bit wider scope than the other is considered similar to either of services 2, 3, 4, 5, 6 and 7. Any of the four services 2, 3, 4 or 5 is considered as similar to any of the remaining three services within that group. Services 6 and 7 are considered as similar. However, none of the services 2, 3, 4, or 5 is considered similar to any of the services 6 or 7.

Further the CTMO indicates that the above mentioned services will not be considered similar to goods in cl. 5 and not to “sales promotion for others” and other services in cl. 35.

The CTMO has further indicated that any applications would have to be in accordance with the above services. These services are standard terms and any application would have to be within the scope of the services. This of course means that it is possible to use the words “medicines” instead of “drugs” and “medical” instead of “pharmaceutical” and the like. However, the CTMO also indicated that at least the below mentioned services will not be accepted since they are considered to be outside the scope.

  • Retail or wholesale services
  • Retail or wholesale of drugs
  • Retail and wholesale services for certain brands of drugs
  • Retail or wholesale services for names of drugs
  • Providing consulting services to customers during drug retailing
  • Providing information for retail or wholesale of drugs
  • Retail or wholesale services for compound preparations provided by medical institutions
  • Other non standard items

As a consequence of the new services above, trademark owners within the pharmaceutical field are advised to review their list of services to ensure that the scope of protection still is sufficient, i.e. if there still is protection for the services actually provided, or if new trademark applications are necessary to uphold the same scope of protection as before. In that sense, the new sub-class might of course also affect the outcome in infringement cases.

Peter Hermansson, Attorney at Law

No, no more top-level domains!

2013 will see the launch of a ton of new top-level domains – perhaps as many as two thousand new generic top-level domains (gTLDs). This is sending ripples through a good many companies because they already have web addresses that are familiar to their clientele and don’t see the need for further domain names. These days, companies prefer to concentrate on directing web traffic to a main website by marketing and technical means, as opposed to drumming up traffic with a multitude of domain names.

There are risks to this anticipated explosion in gTLDs. We noted for instance in connection with previous launches of new top-level domains that certain elements would capitalise on this to turn a ruthless buck. The sheer volume of new top-level domains will also be a headache in terms of manageability and control. In order to intervene on any trademark abuses, the entity responsible for all top-level domains, ICANN, has set up Trademark Clearinghouse to serve as a centralised trademark repository for the new gTLDs. Trademark Clearinghouse is expected to go live at some time in 2013 when the first new top-level domains are launched. The finalised rules to be applied by Trademark Clearinghouse are likely to be presented in spring 2013.

The aims for Trademark Clearinghouse will be twofold:

1) Trademark surveillance for a limited period of time

2) Priority access to register a domain name based on a previously registered word trademark

Access to using Trademark Clearinghouse will require the user to hold a registered word trademark or to have acquired word trademark protection by common-law use. Documentation to prove that such protection is enjoyed will be required.

We know how important it is to protect trademarks via the various electronic services that are available. Aside from surveillance in the trademark register, there is the option of running surveillance on domain name registrations. These forms of surveillance permit measures to be taken to prevent infringement at an early stage. There are currently simplified dispute resolution procedures for domain names that can be used in the first instance to reclaim or deregister a domain name.

Awapatent’s trademark attorneys have experience acting as legal counsels in domain name disputes in courts and can assist in alternative dispute resolution procedures. We can also assist clients seeking to register word marks at the Trademark Clearing House and produce the evidence required for registration.

Ann-Charlotte Järvinen, Attorney at Law, European Trademark Attorney