• ALICANTE ABSTRACT

    OHIM SPECIFICATION PRACTICE CAUSES CONTROVERSY

    Of the many benefits of CTMs, one of the least touted is OHIM’s “class heading covers all goods” approach. Under it, a CTM claiming protection for an entire class heading is automatically deemed to cover all goods or services in that class.

     The lukewarm enthusiasm for this principle is understandable; while at first glance it seems an attractively simple way to obtain broad protection, behind its siren appeal lurk dangerous uncertainties for CTM owners and those clearing brands for use in the E.U. The practice means that brand-owners assessing CTM infringement risks need to proceed with special caution.

     

    THE PRACTICE

    When OHIM originally opened its doors, like most national registries in the E.U. it required applicants to list the goods and services for which they sought protection. In 2003, however, OHIM issued Presidential Communication No. 4/03 stating that henceforward, applications claiming protection for international class headings would automatically be deemed to cover all goods or services in those classes, regardless of whether they were explicitly identified or obviously included in a general term.

    The notice did not explain the impetus for change. Speculatively, however, the already immense burden of data entry, translation and examination must have grown yet heavier as the CTM grew in popularity. If OHIM officials had yearned for greater use of standard acceptable specifications, their feelings would have been understandable. Four years on, however, the impact of the change is being felt and the issues it raises are concerning.

     

    A CASE STUDY: PREMINET

    The Cancellation Division’s decision in PREMINET (Revocation No. 1073C) shows how the practice is being applied.

    In that case, the CTM at issue was registered for most of the Class 9 heading, including “data processing equipment and computers.” In reply to a non-use challenge, the proprietor proved use only in respect of software. “Software” did not appear in the list of goods and, indeed, does not appear at all in the heading for International Class 9.

    Had the mark been registered in the U.K. or many other E.U. member states, the registration would likely have been struck down since the goods for which use was shown did not appear in the specification, nor were they obviously included within the closest general term, “data processing equipment and computers.”

    Before OHIM, however, the proprietor scored a partial victory. In accordance with the practice outlined in Presidential Communication No. 4/03, the Cancellation Division found that whilst “data processing equipment and computers” were not software, as a general term within the class heading it was to be construed broadly. Even though on a normal reading the goods did not appear in the specification, under OHIM practice “data processing equipment and computers” could be interpreted as encompassing software because they incorporated software and could not function without it.

    As a result, the proprietor retained protection for “software,” despite the fact that the term did not appear in the list of goods originally claimed.

     

    THE PROBLEM WITH PREMINET

    The PREMINET approach reveals the real problems lurking behind the “class heading covers all goods” approach.

    Ordinary businesses seeking to clear trade marks for use in Europe have to assess infringement risks somehow. Ordinarily they do this by comparing marks and goods or services to determine whether there is identity, or similarity and a likelihood of confusion. Where a CTM lists the goods or services for which protection is claimed, anyone viewing the Register may reasonably conclude that the registration is not protected for goods or services not claimed or not clearly falling within general terms. However, under OHIM’s practice, this reasonable view is not right.

    Professional advisors may recognise class headings and know that where CTMs claim them, they cover all goods or services in the class, whether explicit or not. However, not all those assessing infringement risks are professionals, nor necessarily trade mark specialists with experience of OHIM practice. For them, the absence of specific items that do not clearly fall within a general claimed term can lead to the conclusion that those items are not covered. When considered from this point of view, the risks inherent in OHIM’s practice are obvious.

    It is also unclear just how far the courts will support OHIM’s stance. For example, although the substantive law applying to OHIM and the member state offices is the same, many of the latter differ completely with OHIM on this issue. As a case in point, the UK-IPO protects marks only in respect of the claimed goods or services, or goods or services clearly falling within general claimed terms. It is difficult to see an English court following the somewhat tortured logic of PREMINET, and it is entirely plausible that where a CTM is litigated in any E.U. national court, a proprietor relying on a class heading may find his protection rather narrower than anticipated.

     

    COMMENT

    Members of the U.K. trade mark profession have lobbied OHIM to change its practice.

    OHIM, however, is reluctant to do so because it considers the “class heading covers all goods” approach to be attractive to users, who it believes want a straightforward means of protecting all goods or services in a class.

    Claims to “all goods/services” in a particular class would equally achieve that end, but would fail to indicate clearly the nature of the goods or services claimed in the manner required under Rule 2 (2) CTMIR. It would not, moreover, help those viewing the register to understand immediately, and without doubt, what goods or services a registration covers without access to professional advice. By analogy with the ECJ’s guidance that colour marks must be graphically represented in a manner that is self-contained and comprehensible without the need to refer to external sources, specifications too should speak clearly and completely as to their coverage.

    Users of the CTM system continue to draw OHIM’s attention to the problems arising from this practice, but OHIM may be unwilling to turn back the clock unless and until the practice is criticised by a national court. Whether a test case will be brought remains to be seen. For now, however, CTM applicants are advised to use class headings, by all means—but also to claim protection for all specific goods or services of interest that are not clearly mentioned or do not obviously fall within a general term.

    For those assessing infringement risks arising from CTMs, the message is “beware.” There may be more to a CTM than meets the eye.