Trade Mark Advice Centre - Alexander Ramage Associates - Trademarks UK, Trademarks protection, Trademarks costs

				\| home \| privacy \| terms of use \| old site \|

Alexander Ramage Associates Trade Mark Attorneys


	Lectures given by Eric Ramage & Maggie Ramage

Lectures by Eric Ramage
-	Lecture to ITMA (March 2010)
-	Working with dots (March 2008)
-	Revocations and Restrictions (Sept. 2006)
-	Internet Issues (July 2006)
-	Overlap between trade marks and design rights (April 2005)

Lectures by Maggie Ramage
-	Lecture tour China/Japan (Oct. 2008)
-	Lecture to INTA Berlin (May 2008)
-	China and Japan Lecture (October 2006)

~ Page 1 of 3 ~
Lecture to ITMA (March 2010)

"Prosecution problems"

A lecture by Eric Ramage

To the International Conference of the Institute of Trade Mark Attorneys,
London, March 2010.

- Classification Issues -
- ‘The Homezone case’ -
- ‘The Firecraft Case’ -

In this talk I propose to deal with some classification and specification issues, then look at new case law ('The Homezone case') that deals with descriptiveness (yet again), the vexed questions of internet hits and Wikipedia and lastly I will look at a new case ('The Firecraft Case') that will require relative grounds to be viewed in an entirely new light.
I will look first at classification and specification issues.

This is a bit of a “Golden Oldie”, best summarized by a friend of mine when we were both students. Never claim “Nuts included in Class 29” is what she used to say. The modern version is this.

Altecnic Ltd's Trade Mark Application (No.2126884)
[2001] EWCA Civ 1928

In the Court of Appeal
Lord Justice Kennedy, Lord Justice Mummery, and Lord Justice Sedley

Altecnic had applied to register the mark CAREMIX for

“valves; valves for use in water circulation; blending valves; and all other goods and services in Class 7”.

It subsequently requested that the classification of goods be changed from Class 7 to Class 11. The request was allowed by the Trade Marks Registry and the application was advertised in respect of

“valves; valves for use in water circulation; blending valves” in Class 11.

Whilst it was common ground that Class 11 was the more appropriate class for the goods, the opponent opposed registration on the ground, inter alia, that the application to amend the class was an application to amend under section 39 of the Trade Marks Act 1994, which permitted only the correction of an obvious mistake; that the mistake in the classification was not obvious and that the change to the classification was ultra vires.

The Court of Appeal held that the application was a considered statement of the applicant which, on the ordinary principles of the construction of documents, had to be read as a whole to determine its meaning and effect.

The applicant had specified the goods in question both by reference to the Class number and to a list of goods which in its original state cross-referred to Class 7 by incorporating into the list of goods “all other goods/services in this Class”. The registrar was entitled to treat the Class number in the application as relevant to the scope of the application. Although the Court said the registrar was “entitled” to treat the class number as relevant, they really meant the registrar (who had permitted the amendment) should have treated the class number as relevant.

The application to amend the Class was accordingly an application to alter the specification of the goods which fell to be governed by section 39. The mistake was not an obvious one and the amendment allowed by the registrar was ultra vires.

To use the illustration of my student days, if you file an application in class 29 and claim simply "nut" the error is not obvious because nuts are properly classified in class 29, and the totality of the application – both the description of goods and the class number on the form – must be taken into account, which means that the error is not obvious, and so the registrar does not have the power to correct your error.

Since I am the one who mentioned nuts, I should explain the reasoning in my day was slightly different. The specification was not deemed to have been limited by reference to the class unless you actually said "included in class –". A claim to “nuts” could encompass edible nuts in class 29, seed nuts in class 31, and metal nuts in class 6, and during examination you would be asked to restrict the specification to make it clear that the only goods being claimed were indeed those proper to the class in which you had filed. Thus, if you claimed “nuts” and indicated in the TM2 (as it was then) that the class was 29, and you subsequently realized that the client made parts of machines, you could ask to transfer from class 29 to class 6, because the nuts you had claimed were not limited to those in class 29 unless you actually said so; but if you claimed "Nuts included in Class 29" then you could not transfer into Class 6 because the only nuts in class 29 are edible nuts, and once you had claimed that, there would be nothing left to transfer to class 6.

Remaining with the subject of classification, I strongly suspect that OHIM’s “the class heading covers all goods” approach to specifications will become increasingly a subject for heated debate.

What is this rule and how does it work? A CTM claiming protection for an entire class heading is automatically deemed to cover all goods or services in that class, whether or not the specific product is itemised.

Communication No 4/03 of the President of the Office of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations says, at Paragraph II:

A Community trade mark application must contain a list of goods and services in respect of which registration is requested.

Pursuant to Rule 2 (2) of the Implementing Regulation (the IR), the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified preferably in only one class of the Nice Classification.

So far so good.

Paragraph III of Communication No 4/03 tells us

The Office strongly recommends that applicants properly classify their list of goods and services in the application and group them in the order of the Nice Classification. If this is not done, the Office will invite the applicant to remedy that deficiency pursuant to Rule 9 (3) (a) IR.

We are then told:

Paragraph III of Communication No 4/03

It constitutes a proper specification of goods and services in a CTM application if the general indications or the whole class headings provided for in the Nice Classification are used. The use of these indications allows a proper classification and grouping. The Office does not object to the use of any of the general indications and class headings as being too vague or indefinite, contrary to the practice which is applied by some national offices in the European Union and in third countries in respect of some of the class headings and general indications.

What exactly is the effect of this rule?

The use of the class headings constitutes a claim to all the goods or services falling within the relevant class, and the use of a general indication constitutes a claim to all the particular goods or services falling under the general indication.

According to Communication No 4/03, because the 34 classes for goods and the 11 classes for services comprise the totality of all goods and services, the 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 this particular class.

Use of any of the general indications found in the class heading will cover all of the individual goods or services falling under that general indication and properly classified in the same class. For example, the use of the general indication "Pharmaceutical and veterinary preparations" in class 5 will encompass all pharmaceutical preparations regardless of their composition or indication. Somewhat more controversially, when a specification contains "data processing equipment and computers" as a general indication, this will be considered as embracing also computer software. The reasoning appears to be that "computer software" is classified in class 9 because of the presence of the general indication "data processing equipment and computers" in that class, and because computer software is seen as directly related to the corresponding apparatus or equipment, such a claim is deemed to encompass computer software.

What effect does this have?

The effects of the rule that (i) the use of the class headings constitutes a claim to all the goods or services falling within the relevant class, and that (ii) the use of a general indication constitutes a claim to all the particular goods or services falling under the general indication, become apparent when the Office has to deal with a request to restrict the list of goods and services, or to deal with a partial surrender or to deal with an attack on a registration or when the identity or similarity of goods or services is to be judged in an opposition or cancellation proceedings.

As regards restrictions and partial surrenders, the list of goods or services can legitimately be restricted to one or more specific goods or services properly classified in the same class and the class headings.

It is not regarded as an extension of the list of goods and services (and an extension is of course inadmissible) if a specification is limited by deleting a general indication and instead selecting one or more specific items falling under the general indication. To take the specific example of "data processing equipment and computers", it is proper to limit a specification to "computer software" when the original specification contained "data processing equipment and computers", but it would not be proper to do so when this general indication was not found in the original specification.

It remains entirely possible to declare a restriction or partial surrender by adding a limitation to a general indication, for example:

alcoholic beverages, namely gin, whisky, vodka;

or

alcoholic beverages with the exception of gin, whisky, vodka.

Once a restriction has been declared it is not possible to return to a broader specification. To cite a specific example from Communication No 4/03,

For example where the original specification contained "data processing equipment and computers" and was thereafter limited to "computer software", it is then no longer possible to return to a broader indication, such as "computer hardware". (Article V Clause 1 fourth paragraph).

How does this work in practice?

DECISION of the Cancellation Division of 19/05/2006 IN REVOCATION Number: 1073C Community trade mark: 686196 PREMINET.

Community trade mark No 686196 PREMINETwas filed on 21/11/1997 and registered on 7th June1999 for:

“Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment (excluding software), wireless telecommunication network.”in class 9,

It also covered services of Class 37 that were voluntarily surrendered and covered

“Telecommunications” in class 38.

Now, I don’t want to spring any nasty surprises on you, so I want you to concentrate very carefully on the Class 9 specification. Read it again.

According to Communication No 4/03, when a specification contains "data processing equipment and computers", this will be deemed to cover “computer software”. The PREMINET registration covered

cash registers, calculating machines, data processing equipment (excluding software),

The fourth paragraph of Clause 1 of Article V of Communication No 4/03, said:

For example where the original specification contained "data processing equipment and computers" and was thereafter limited to "computer software", it is then no longer possible to return to a broader indication, such as "computer hardware".

Well, that seems clear enough doesn’t it?

Let’s see what happened:

The Cancellation division said:

(18) The submitted evidence relates only to software. Thus for any other goods or services the CTM has to be declared revoked.

(18.1) The trade mark has not been used for the goods: “Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment (excluding software), wireless telecommunication network” (class 9)

Software

(19) The Communication No. 4/03 of the President of the Office dated 16/06/2003 clearly states in paragraph IV, when a specification contains "data processing equipment and computers" as a general indication, this will be considered as embracing also “computer software”. Any “data processing equipment and computer” contains “software”. To argue as maintained by the applicant that software is not included in such broad specification of goods is contrary to said communication and does not take into account that a computer or data processing equipment cannot function without software. .

They went on to say at Paragraph 21

(21) The proprietor …submitted evidence relating to the launch of PROMINET software, starting already on 25/10/2004, shows overall genuine use of the trade mark PREMINET for software...

And concluded at Paragraph 23:

(23) For the remaining goods and services the CTM has to be declared revoked. As concerns "data processing equipment and computers" the CTM is revoked for said products excluding “software” for which genuine use has been shown.

I really have difficulty reconciling this with the fact that the original specification specifically excluded software. To remind you of what I said earlier,

Community trade mark No 686196 PREMINETwas filed on 21/11/1997 and registered on 7th June1999 for:

“Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment (excluding software), wireless telecommunication network.”in class 9,

I do not have time to do so here, but you may wish to do your own analysis of how the OHIM practice fits with the United Kingdom cases to which I have referred in the Handout, of Mercury Communications Ltd. V Mercury Interactive (UK) Ltd. 1995 FSR 850 the year 2000 cases of Premier Brands UK Ltd v Typhoon Europe Ltd. 2000 FSR 767 and Minerva Trade Mark 2000 FSR 734 the 2001 case, Decon Laboratories Ltd v Fred Baker Scientific Ltd 2001 RPC 293 the 2002 Court of Appeal case, Thomson Holidays Ltd v Norwegian Cruise Lines Ltd 2002 EWCA Civ. 1828 and the 2004 ANIMAL Trade Mark case 2004 FSR 383.

		Next page

	Alexander Ramage Associates, Griffin House, West Street, Woking, Surrey, England, GU21 6BS Tel: 01483 750701 - Fax: 01483 740560 - Email: ARA@ramage.co.uk