The Terrors of Taxonomy

Order in all things -
these are breakfast cereals in class 30
everyone will accept that

The OHIM British Day hosted at the UK IPO yesterday is usually an opportunity both to hear the latest on the office procedures and IT tools and give our feedback on usability. This year it was not. Instead we did find out about several of the Co-Operation fund projects and in particular received a very enthusiastic presentation from Ms. Inge Buffolo. She waxed lyrical in particular about the work that was being done on the classification tools and creating a common database. She is the Project Manager and as an engineer clearly devoted to the idea of putting the entire classification into a neatly ordered structure so no business man need ever say what his goods and services are in his own words ever again.
The aspect that worries me about this is that trademarks are directed at people, ordinary business people who may get sent registration certificates and be told to stop infringing. These are users too. It may well be that the Advocate General in the IP Translator opinion in Case C 307/10 called such users *economic operators* when he said

65. The second objective is to enable economic operators to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.

At the coalface of trademark practice it really matters. Recently it was suggested to me that expert evidence would be needed to determine whether a web based application was within the WIPO standard terms in class 42. He meant it. He was confused. Similarly a start up filed its own application by searching software in the OHIM efiling tool and ticking select all. That seems a sensible option when you want to cover software. No, it results in along and chaotic specification and no clarity at all for anyone. However such a specification can be translated at no cost into all official languages. Yes they were a start-up and they were programmers. Since the irresponsible system permits them to protect all manner of software, that's what they wanted but it would have been better had they written just software and overridden the dire warning signs.

The other worrying aspect about this taxonomy is that it is hierarchical and each broad term is supposed to cover all beneath. Does this mean that judges and users are going to have to consult the taxonomy to see what the certificate protects. This flies in the face of good sense however accessible the taxonomy may be.

Acceptable indications are good and work great for breakfast cereals but we must not get carried away into thinking that all goods and services are best described by reference to remote and abstract terms that mean little to the ordinary person.

Fortunately Richard Ashmead was present and in good health.

Did you ever wonder how you compare with the 'average' IP pro?

Readers may not be aware that there is a UK patent and trade mark attorney salary survey floating around right now. Organised by some fellows called Fellows and Associates, the survey is hosted by SurveyMonkey and you can access it here.  It appears to take the same amount of time to complete whether you are earning a fortune or struggling by on a pittance -- and the closing date for completing it is 7 February.

This survey will provide some handy first-hand information concerning the UK profession which, if nothing else, will give the professions some idea as to how much (or little) is being earned, how far people are prepared to move in search of a position, what their age-range and qualifications look like. Do give it a whirl!

The ABS arrives at last..or does it

In this structure in Serjeant' Inn, I once worked
before it took on this alternative form

The Ministry of Justice marked the entry into business of the Solicitor's Regulation Authority as an ABS regulator on 3 January 2012, with an inspirational  press release . Amongst other good and proper things, the Minister suggests

"Customers will find legal services more accessible, providing a much more competitive and efficient service."

 It is unlikely that many sole practitioners will be transforming themselves into ABS with SRA regulation. Although the SRA team reports that they are ready and waiting, it looks as if the customers may have to wait at least another six months before they can go knocking for real services onto an ABS door, as that is how long it is going to take the SRA to make a decision on your application ( if they don't decide to extend the time to 9 months).  Should you be interested in applying  this is the link you need along with at least £2000 for the initial fee to get your application looked at.

The awesome regulatory burden is likely to deter existing law firms who merely want to improve and modernise their management structures. The Lawyer magazine reports that the insurance company Admiral might constitute itself as an ABS as a workaround to recover some profits to replace those lost when the referral fee ban was introduced. Frankly, this probably wasn't what the Ministry of Justice had in mind, when they began this well-intentioned initiative to bring modern management practice into the legal world by abolishing the rule that only lawyers can manage lawyers.

Across the Atlantic, I was amazed by this piece in which the IBM Gen Counsel Robert Weber rails against the possibility of such structures being introduced into the US market. In his view investment isn't needed because there already exists global law firms, who are market leaders without having needed external investment. I am sure that his law firm suppliers won't mind the barriers to new entrants remaining high.

IPReg is already applying to the Legal Services Board to become an ABS regulator in its own right and it is likely that any IP practice or new business support firm offering low-cost IP business advice that Hargreaves wants to see (see my earlier post here) will prefer to use that regulator.  Incidentally, if you want a closer look at how this whole process works, there are currently vacancies on IPReg for professional members at £320 a day. More information here