Trade mark specifications – A simple oversight that could land you in litigation and its even simpler solution: Alliance Pharmaceuticals Limited v EUIPO

IP MATTERS NOW FALL UNDER NEW COMMERCIAL COURTS
February 18, 2019

Many traders believe that they can file and prosecute their own trade mark applications, without the need for a specialist trade mark attorney. For a variety of reasons, this is short-sighted, as you may save on initial costs to file your trade mark application, but you might find yourself in trouble down the line when your trade mark application is substantively examined by the Trade Marks Office and never actually obtaining registration of your self-filed application; or you may find yourself facing or in the midst of opposition proceedings, where your trade mark application is attacked – the opponent being able to rely on absolute and/or relative grounds of refusal.

A good example of the pitfalls that could befall an applicant for registration of a trade mark can be found in the case of Alliance Pharmaceuticals Limited v EUIPO (Case T-279/18 before the General Court of the EU and delivered on 17 October 2019). Although an EU case, the South African courts have found guidance from EU judgments in the past. In this particular case, the General Court shed light on the issue of the wording and punctuation of trade mark specifications, an often overlooked aspect of a trade mark application. As legal practitioners, we always harp on about how important wording and punctuation is and we are often called “overly pedantic”. This case exemplifies this importance and reinforces the need for our “detail-obsessed” traits.

The General Court’s decision came down to an interpretation of a class 5 specification, which read: “Pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes”. Now, some might ask, “well, what is wrong with this specification?” However, the Board of Appeal (court a quo) observed that this specification was not clear; it would be neither unreasonable nor contrary to grammatical rules to interpret the specification as covering pharmaceutical products “except for those intended as food for invalids and infants and using pharmaceutical chemical preparations”; and while the potential of other interpretations could not be excluded (an important concession – see below), the goods had to be worded in the register with sufficient clarity and precision to enable the extent of the monopoly sought to be determined solely on that basis. Therefore, it interpreted the specification of goods strictly as excluding chemical preparations for pharmaceutical purposes.

The applicant relied on a single plea in law, namely that the Board of Appeal had interpreted the specification incorrectly and specifically disputed the narrow interpretation given to the specification. Further, the applicant submitted that the narrow interpretation of the specification is contrary to the EUIPO’s examination guidelines, and more specifically, contrary to how exclusions are to be worded in specifications. The applicant proferred that, if the intention is to exclude certain types of goods, the conjunction to use is “or” and not “and”. Consequently, the applicant argued that the words “but not including infants’ and invalids’ food and chemical preparations for pharmaceutical purposes”, should be interpreted as excluding only the first group of goods, namely foods for infants and invalids, and as including the second group of goods, namely chemical preparations for pharmaceutical purposes. Additionally, the applicant submitted that the abovementioned, narrow interpretation of the specification results in a specification which “makes no commercial sense, which is contrary to the normal canons of construction of legal texts”. The applicant submitted an alternative line of argument, should this one fail, but this is not relevant for current purposes.

The EUIPO disputed the applicant’s arguments, stating that the use of an example of an exclusion taken from the EUIPO’s examination guidelines cannot underpin a basis for a legal rule determining the conjunction which ought to be used when drafting an exclusion in a specification. Further, it averred that it is the sole responsibility of the applicant to draft a clear and precise specification. The EUIPO tendered that the specification as filed is ambiguous and that the interpretation of the Board of Appeal is neither unreasonable nor contrary to grammatical rules, even though other interpretations cannot be excluded. Finally, the EUIPO argued that the extent of the monopoly afforded to an application must be capable of being determined solely in terms of the contents of the register. Where the specification of goods or services lacks clarity and precision, the scope of the monopoly in the mark must be construed narrowly, because the proprietor of the trade mark should not gain from the failure of its obligations to draft a specification with clarity and precision.

The General Court dealt swiftly with the issue of basing a legal rule on an example from the EUIPO’s guidelines as being incorrect, because these guidelines are not binding for the purposes of interpreting provisions of EU law, and must be read in line with the established provisions of EU law, and not contrary to them.

The General Court affirmed the suggestion made by the Board of Appeal that the specification may give rise to two possible, literal interpretations. Therefore, in the absence of punctuation, and in particular the use of a semi-colon separating “infants’ and invalids’ foods” from “chemical preparations for pharmaceutical purposes”, or additional information, one possible literal interpretation of the specification could be that both “infants’ and invalids’ foods” and “chemical preparations for pharmaceutical purposes” are covered by the restriction “but not including”. This is the interpretation adopted by the Board of Appeal. However, another possible literal interpretation is possible: that the specification does not exclude “chemical preparations for pharmaceutical purposes”. The Court asserted that this possibility was even acknowledged by the EUIPO (see above). The opponent of the relevant application only brought this issue to bear at the hearing before the Board of Appeal, confirming that it was not at all obvious that the specification would be interpreted as did the Board of Appeal and that the requirement for clarity and precision was complied with.

The Court rallied to the aid of the applicant and asserted that the interpretation made by the Board of Appeal did not duly take cognisance of additional factors that are essential to appreciating the extent of the monopoly of the specification, namely the actual intention of the applicant for registration and the need to give appropriate scope to that wording, one which precludes an interpretation which leads to an absurd result for the applicant for registration. Interpretation of the specification without reference to these indicators runs the risk of undermining legal certainty for all parties, including other traders. Taking the reasoning of the Board to its natural progression would lead to a situation which is incompatible with the requirements of predictability and legal certainty.

The Court stated that where there are two or more possible literal interpretations that can be afforded to a text, one cannot summarily dismiss one of these interpretations in favour of the other, as the EUIPO deems fit. Rather, it is the interpretation which, among several possible interpretations of EU legislation, does not lead to an absurd result that must be preferred. However, if the text is ambiguous or the literal interpretation would lead to a non-sensical result (which is supported by the Court in this case), the meaning may be reviewed after being placed in its context and construed in accordance with the provision of EU law as a whole, with regard to the objectives and its evolution at the date at which the provision is to be applied.

Relying on previous case law, the Court laid down that in construing a specification of goods, the wording must be interpreted in the most coherent fashion; in light not only of its literal meaning/s and its grammatical construction, but also, if there is a risk of an absurd result, of its context and the actual intention of the mark’s owner as regards its scope. The EUIPO must resolve disputes in literal interpretations by deciding to use the most plausible and predictable interpretation possible. It would be absurd to assume that the owner intended to seek protection in its application for registration of its trademark in respect of a group of goods which is then restricted by a broadly equivalent group of goods.

Key take-aways from the decision

When drafting or selecting a trade mark specification:

  • ensure that, in using language, the intention of the proprietor is to be found in the specification of goods or services (this is why we ask so many questions before just filing an application);
  • prevent the possibility of ambiguity from the outset;
  • ensure that the specification is not possible of being read to yield an absurd result; and
  • the wording, punctuation and grammar used in the specification must read so as to maintain clarity and precision –

sometimes, the placement of a simple semi-colon is all that is required.

If you need help in preparing your trade mark application and simply “getting it done” or any other intellectual property services, don’t be shy – email us at info@rmtucker.co.za.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE)

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