Irregularity Notices from WIPO - International Applications

I have sung the praises of WIPO's Madrid Highlights publication in the past (for example, see here).

Their latest issue and their first of 2013 has recently issued. It contains information collated over the previous three months, such as the notification issued by the Syrian Trade Marks Office.

I would like to bring attention to readers of this blog to the 'Madrid Tips - Practical Examples on the Implementation of the Madrid System' section. In this issue WIPO explore Rule 13 of the Common Regulations.

This relates to the WIPO Irregularity Notices they can issue regarding the classification of goods or services. These are somewhat unusual so if you do not have much experience of the system, or tend to file standard specifications (that are always acceptable) then WIPO's questions and answers could be quite useful for you in case you receive such an Irregularity Notice.

I copy WIPO's questions but have adapted the language of the answers to be (possibly) more user-friendly and less "WIPO-speak" in case this could be helpful. Of course, the original WIPO text can be found in the Madrid Highlights publication.

Whenever WIPO considers that the classification of goods and services in an International application is incorrect, it will notify the Office of origin (your Trade Marks Office, where you filed the International application) and inform the applicant (or representative).

However, the responsibility for remedying this irregularity lies with your Trade Marks Office, which may, within three months from the notification, make a proposal for remedying the irregularity.

Q1. I am the applicant of an international application. I have received an irregularity letter indicating that a term of the list of goods and services is too vague for the purposes of classification. The letter also states that the irregularity is to be remedied by the Office of Origin. What does it mean?
R1. This means that WIPO considers that a term used in the list of goods and services is not
sufficiently clear for the purposes of classification. When this happens, WIPO notifies your Trade Marks Office and informs you, the applicant (or representative). WIPO may suggest either a substitute term or the deletion of the term. Your Trade Marks Office may, within three months of the notification, make a proposal to remedy the irregularity.

Q2. Is any action required on my part as the applicant (or representative) of the international application concerned?
R2. There is no action required from you in this case. However, you, as the applicant (or representative), may communicate your views regarding the irregularity to your Trade Marks Office, or your Trade Marks Office may seek your views.

Q3. What options has the Office of origin to reply to the irregularity?
R3. Your Trade Marks Office may respond to the irregularity as follows:

• Agree to accept any suggestion which WIPO may have made, then the term will be changed accordingly.
• Disagree with any suggestions. Then, your Trade Marks Office may respond to the irregularity by submitting a new proposal. 

If the new proposal is acceptable to WIPO, then the term will be changed accordingly.

If the new proposal is unacceptable to WIPO within the three-month time limit, there are two
possibilities:

• If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
• If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.

Q4. What happens if the Office of origin does not reply to the irregularity?
R4. If your Trade Marks Office does not reply to the irregularity, there are two options:

• If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
• If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.

Q5. If the Office does not reply, can I reply in its place?
R5. No! You may communicate your views regarding the irregularity letter to your Trade Marks Office, but you cannot respond to the irregularity directly to WIPO. The reply to the irregularity must be sent to WIPO through your Trade Marks Office within the prescribed time limit.

Q6. Will I be informed of the outcome of this procedure?
R6. Yes, where the irregularity is resolved and the international application conforms to the
applicable requirements, the mark is registered in the International Register and a certificate is
issued. Furthermore, the international registration is published in the Gazette and, for
information purposes, in the ROMARIN database. You will also be informed when a non-classified term is deleted due to a non-acceptable proposal or in the absence of a reply from your Trade Marks Office.

It should be clear that the responsibility of responding to these Irregularity Notices lies with your Trade Marks Office but it is important that these are not overlooked by applicants or their representatives.

As the gatekeeper of the Nice International Classification, WIPO take a strict view to where products and services are classified.

If an Irregularity Notice is issued, do not merely docket the deadline provided by WIPO for your Trade Marks Office to respond to them. It is suggested that you docket an earlier date so you can give input to your Trade Marks Office and they can take it into account when responding to WIPO.

You will also be familiar with how your Trade Marks Office operates. Are they organised? Are they pro-active? This will help you determine if you need to get in contact with them upon receipt of an Irregularity Notice to ensure your views are heard and so they respond in good time.

This is a quirk of the Madrid system. It can leave you scratching your head if you find yourself in the strange situation where you receive an Irregularity Notice (aka Office Action) yet you cannot respond to it. Hopefully this scenario is now more clearly explained.

Class headings

The IP Translator case created a judgement in relation to the use of Class headings of the International (Nice) Classification covering ALL the items in its particular class.

Previous OHIM practice was that Class headings included all other goods or services in a particular class. Now specifications must contain clarity and precision meaning this is no longer necessarily the case.

It is now possible to file for Class headings and then indicate that this is to include all the goods/services within that Class when filing Community Trade Marks by simple ticking a box when filing on-line.

This has led a number of International applications to be filed (that contain Class headings) with a statement to claim that the applicant wishes to include all the goods or services in the Class. Some of these statements have been specific to the European Community and some to other countries.

Bringing us more up-to-date, this has led WIPO to issue Information Notice 23/2012 stating firmly that it is the Offices of each designated country that will determine the scope of protection.

As WIPO allude to, this will almost undoubtedly see home applications filed for every single item of goods or services in a desired class and then any corresponding International applications for the same specification. It can also be anticipated that applications in non-Madrid countries, that use the International Classification and accept broad specifications, will be filed for these long specifications too.

In times past when filing instructions were received from foreign associates by fax this would have been unbearable having to re-type up long lists of goods or services. Nowadays with on-line systems and e-mail it is far less burdensome and less error prone to cut-and-paste. However, some countries still require printed forms to be filed - these may not have sufficient space for a long list of goods or services without the need for an awkward annex. We could then expect errors when the details are typed into the Register by an official. There are also countries where the Journal/Gazette is still physically printed - with some Government printers already under a huge strain this will surely add delays to applications. The practical implications could stretch across the globe.

Specifications and useful tools

When I started out in the world of trade marks the crafting of specifications was sometimes a time-consuming task. There were two books. One contained the goods/services in class order. The other listed the goods/services in alphabetical order. It was, or still is, also printed in Chinese, Croatian, Czech, Danish, Dutch, German, Italian, Japanese, Lithuanian, Macedonian, Norwegian, Polish, Portuguese, Russian, Slovene, Spanish and Swedish. For some of these languages, it must still be an invaluable resource.

For some of us, we now have the benefit of on-line tools to help us devise specifications of goods and/or services.

In Europe we have the EuroClass Classification Assistance tool developed through OHIM. As a digression and being a teenager in the 1990s, the term EuroClass can only make me think of Eurotrash, a surreal and sarcastic TV show. Perhaps I am not the only Briton for whom this comes to mind?

There are six national Trade Marks Offices that are harmonised with OHIM. Italy, Spain and Sweden make up three. The other three are the English-speaking countries of the EU: Ireland, Malta and the United Kingdom. An acceptable (approved) specification at OHIM is going to be similarly automatically accepted by, for example, the Italian Ufficio Italiana Brevetti e Marchi or the UK Intellectual Property Office. Likewise, using an acceptable term to file nationally in the UK would also be an acceptable term for filing nationally in Ireland.

For the other countries it is possible to get accepted terms for each of the national Trade Marks Offices within the EU (another 19 Offices) plus the accepted terms from Switzerland and the United States are also included in the tool. The latter is taken from the "U.S. Acceptable Identification of Goods and Services Manual (ID Manual)".

Also, available through EuroClass are WIPO's acceptable items. As WIPO is the gatekeeper of the Nice Classification this is helpful.

WIPO do have their own tool available too. It is named the Goods & Services Manager, not quite as cheesy as the EuroClass name.

A recent announcement from Geneva informs us that this will now be available in 10 languages: English, French and Spanish, the official languages of WIPO, plus Arabic, Dutch, German, Hebrew, Italian, Portuguese and Russian.

I must admit that my navigation skills only provide the Goods & Services Manager in the three official languages of WIPO. I can, at least, locate the Russian version but have had no joy in finding the Arabic, Dutch, German, Hebrew, Italian or Portuguese versions.

Dutch, German, Italian and Portuguese specification items can be found through EuroClass. That leaves only Arabic and Hebrew as additional resources.

However, these tools are primarily for the benefit of local practitioners filing a Madrid Protocol application as opposed to a foreign applicant filing in an Arabic-speaking country or in Israel. Effectively, using acceptable WIPO terms (in English, French or Spanish) is going to avoid those awkward to deal with irregularity notices from WIPO.

This does not mean a wonderfully worded specification that WIPO loves is going to be accepted locally in the designated countries of a Madrid Protocol application. The Israeli Office does not like class headings and is particularly strict when it comes to pharmaceutical trade marks. You can obtain broader protection (e.g. for house marks) with the filing of an Affidavit and for pharmaceuticals you can defer limiting a specification to a specific product for five years. However, expect an Office Action if filing broadly; I'd recommend considering filing nationally over Madrid in this event.

The US, as many will realise, is also very strict with specifications and will not accept the more blanket coverage provided by some WIPO terms. Asian countries can present problems too. China requires specific items if you want them protected and don't rely on a class heading; note recent guidelines in the EU too. South Korea can also be stringent with what is acceptable.

These tools are useful and welcomed and they can go a long way to helping us avoid unnecessary Office Actions and irregularity notices but there are limitations.

The 10th Edition of the Nice Classification came into force on 1 January 2012. As WIPO look to review this every year going forward do be careful with searches, filings, renewals and watching. Not all countries will proceed with reclassifications whether this be ex-officio, at applicant's request or as a mandatory or optional part of a renewal.

For searches it could be important to ensure you search the 'old' Class in addition to the current class. For example, "vending machines" have moved to Class 7 from Class 9. The addition of Classes 43-45 for services created a general awareness of this but for goods we need to keep in mind as often it is not relevant yet sometimes it can be. The reverse is true for watching as if you are a vending machines company then you will need to ensure your marks are watched in the current Class 7.

When it comes to filings, be alert not to just copy-and-paste a specification from a registration accepted last year. Consideration can also be given to making re-filings in the correct class particularly for countries that examine on relative grounds and who have not reclassified. For a chain of beauty and hairdressing salons, you may find your old Class 42 registration not being cited against similar recent applications in Class 44. This may not be the best example but if you find yourselves fighting a number of oppositions then it might be more cost-effective to file afresh in Class 44 to form a bar to registration for third parties that the Trade Marks Office can defend on your behalf.

After all this it does beg the question, is classifying really getting easier?