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, 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 -

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 Process APPLICATION 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 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 International Classification of Goods and Services for the Purposes 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 10 th 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 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 = 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 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?