By Trevor Little
June 19 2012
The Court of Justice of the European Union (ECJ) has ruled in the IP TRANSLATOR case. While the decision was expected to provide clarity over the class headings issue, one commentator states that it instead “makes matters even more complex and confusing”.
In Communication 4/03, the president of OHIM announced that the use of language from the class headings of the Nice Classification to specify goods and services “constitutes a claim to all the goods or services falling within this particular class”. The 2003 communication supports the ‘class-heading-covers-all’ approach, which is followed by eight of the European national trademark offices. In contrast is the ‘means what it says’ approach, followed by 17 offices, which consider that only the meaning of the words actually used in a trademark specification can determine the scope of protection given. The two approaches, and Communication 4/03, were at the centre of Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10), often referred to as the IP TRANSLATOR case.
The Chartered Institute of Patent Attorneys applied to register the trademark IP TRANSLATOR in Class 41 of the Nice Classification. The description adopted the general words of the class heading for Class 41, and the application was rejected by the UK IPO on the grounds that the mark is descriptive of services within the class (Class 41 covers translation services, but its class heading only includes the following: “education; providing of training; entertainment; sporting and cultural activities”). The case was referred to the ECJ for a preliminary ruling, with the following questions asked:
"In the context of [Directive 2008/95/EC], is it:
1. necessary for the various goods or services covered by a trademark application to be identified with any and, if so, what particular degree of clarity and precision?
2. permissible to use the general words of the class headings of the [Nice Classification] for the purpose of identifying the various goods or services covered by a trademark application?
3. necessary or permissible for such use of the general words of the class headings of the said [classification] to be interpreted in accordance with [Communication 4/03]?
In today’s ruling, the ECJ stated:
“Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trademarks must be interpreted as meaning that it requires the goods and services for which the protection of the trademark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark."
“Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks… to identify the goods and services for which the protection of the trademark is sought, provided that such identification is sufficiently clear and precise."
“An applicant for a national trademark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trademark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.”
Reviewing the ruling, Hiroshi Sheraton, a partner at McDermott Will & Emery, told WTR it makes matters “even more complex and confusing. The court laid out the objectives of the classification system, namely that a single set of wording should mean the same thing to everyone who reads it (which makes perfect sense). It is possible (for some classes) to use the class headings to cover the whole class, because all goods within that class fall within the natural meaning of the words in the class heading. But for other classes it is not (for example, because sleeping bags do not fall within the normal meaning of ‘furniture’ as used in the class heading). Hence, the court held that strictly applying OHIM's approach (of automatically covering the whole class when the headings are used) runs the risk of undermining legal certainty. However, the solution offered was that national registries should decide themselves whether a specification is sufficiently clear and precise, and that an applicant must specify whether its application for registration is intended to cover all the goods or services in the class".
He notes that one problem with this is that “an application for ‘all goods in class [x]’ will be rejected by OHIM and at least the UK IPO. The current practice in the UK is to officially replace such a specification with the words from the Nice class headings - making the whole process circular. Moreover, it is very hard to see how the meaning of a specification can change its meaning, depending on the applicant's specified (and subjective) intention to cover all goods in that class or not.“
He warns that it creates a “potential trap” for brand owners which have existing marks that use class headings in their specifications: “If it is not possible to determine (retrospectively) whether the applicant intended to cover the whole class or not, then such marks will not meet the requirements of clarity and precision.”
As for the practical impact the ruling will have, he concludes: “There is almost certain to be a change in many registry procedures on this point. However, it is not clear what such changes will be and whether they will be co-ordinated or consistent across Europe. We will just have to wait and see.”
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