Posts by: Kristian Martinsson | (2) posts

What does Brexit mean for the EUTM system?

The people of the United Kingdom have spoken: They do not wish to be part of the EU any longer. It will now take time, probably years, before we know the terms of the divorce between the UK and the EU. Having said that, what impact of Brexit do we foresee for trademark owners?

Short-term EUTM registrations are still valid in the UK. Keep in mind that the referendum has voted for Brexit, but the UK is actually yet to request for an exit, which might not happen until the autumn. This means that no short-term action is required and EUTM registrations remain valid in the UK.

Once Brexit is a fact, does it mean that the trademark protection in the UK will be lost by EUTM proprietors?

For existing EUTM registrations the answer is probably no. The expected solution is that a transitional period is set up where EUTM owners can extend/convert their EUTM registration to national UK registrations (this will likely include payment of official fees).

For new EUTM registrations the answer is that the UK will no longer be covered by EUTM and a separate application in the UK will therefore need to be filed. Today’s official fee to add the UK to an International/Madrid registration is only CFR 262 for the first class and CFR 73 for each additional class. In other words, it is not massively expensive.

From a prosecution perspective the changes will likely only be administrative and mean two applications with a little higher cost. From other perspectives we see the following three issues:

  1. Injunctions based on EUTM registrations normally cover the entire EU. Post-brexit the courts in the UK will no longer be able to issue pan-EU injunction, and vice versa court injunction in other EU member states will not cover the UK. This will increase the cost of litigation since two sets of litigation will be required.
  2. Today it is sufficient to use a EUTM registration in the UK to maintain it in the entire EU. Post-brexit EUTM proprietors, who rely on their EUTM in the UK, will need to revise their filing strategy.
  3. The case law of the Court of Justice of the EU will no longer be directly applicable in the UK, which probably will lead to differences in jurisprudence between the EU and UK. This will be important for brand owners to keep track of.

Overall our initial position is that there is no need for drastic actions with regard to the Brexit referendum. We will of course keep reverting to this subject until the dust has settled and the picture is more clear.

Kristian Martinsson, Attorney at Law 

The IP Translator watch is finally over

On 19 June 2012, the Court of Justice of the European Union finally delivered its judgment regarding the legality of the of OHIM’s class heading practice

So, what is IP Translator?
The case relates to the lawfulness of the OHIM’s practice that begun in 2003, which means that when a class heading in the Nice Agreement is used this covers all goods and services in that class.

The case itself is a reference to the court that arose from a UK application filed by The Chartered Institute of Patent Attorneys(CIPA) for the mark IP TRANSLATOR. The application was for the Class 41 heading, namely “Education; providing of training; entertainment; sporting and cultural activities”.

The UK-IPO (UK Trademark Office) regards itself as bound by OHIM’s practice on class headings for the purposes of examination. Consequently, it objected that the mark was descriptive of translation services because these fall within Class 41, even though they do not clearly fall within the scope of any items in the class heading. CIPA argued that translation services were not covered by the specification as claimed, and appealed the refusal. Three questions were referred to the Court for a preliminary ruling:

1) whether it is necessary to identify goods and services with clarity and precision and, if so, with what degree thereof;
2) whether it is permissible to use the general wording of a class heading for specifications; and
3) whether it is necessary or permissible to construe class headings as covering all goods or services in a class.

What did the Court say?
1) Goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision in order to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark based on the list of goods alone.

2) It is possible to use the general indications of the class headings of the Nice Classification referred to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise. Each part of the Nice heading will need to be assessed on a case by case basis.

3) An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trade mark is sought, must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

What does the OHIM say?
The OHIM has reacted fast to the decision by issuing Communication No. 2/122 of the President of 20/06/2012 (repealing Communication 4/03) regarding its practice in the light of IP TRANSLATOR saying:

• The Office will continue to accept class headings but on a case-by-case basis. Which terms that are acceptable will be specified in the guidelines of the Office.

• For new CTM Applications it will be up to the Applicant to specify whether the application for registration intend to cover all the goods and services included in the alphabetical list or not (the OHIM is currently working on a user friendly way to do this).

• For CTM registrations and pending CTM applications already filed that use the class heading, the Office will assume that it was the Applicant’s intention to cover all the goods and services in the class.

So, shall we all go back to using class headings in the EU?
One should keep in mind that by claiming protection for the entire class heading and all goods therein one is also creating a large target for third party Oppositions and future revocation and cancellation actions.

Due to the already cluttered CTM register in combination with the national trademark registers, national trade name registers, unregistered trademark rights and all other national rights that are possible grounds for opposing/cancelling one should in this humble attorney’s opinion be careful with class headings. This unless one is dealing with a very distinctive and original trademark or the client has interest in a wide sphere of goods or services.

In my experience Oppositions and later actions can often be avoided if a combination of wider terms and more specific terms that clearly show what goods or services the applicant intends to use the trademark for is used.

Kristian Martinsson, Attorney at Law