IP TRANSLATOR - a clear and precise judgment?

The Court of Justice of the European Union (ECJ) has handed down its judgment in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10, 19 June 2012), dealing for the first time with important questions regarding the specification of goods and services.  Practitioners had hoped for clear guidance on the nature of specifications and, particularly, on OHIM's controversial 'class heading covers all' practice, under which an application or registration that includes a class heading is deemed to cover all goods or services in the relevant class.  However, the judgment handed down potentially creates more problems than it solves.

The Court of Justice of the European Union (ECJ) has handed down its judgment in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10, 19 June 2012), dealing for the first time with important questions regarding the specification of goods and services.  Practitioners had hoped for clear guidance on the nature of specifications and, particularly, on OHIM's controversial 'class heading covers all' practice, under which an application or registration that includes a class heading is deemed to cover all goods or services in the relevant class.  However, the judgment handed down potentially creates more problems than it solves.

The case arises from an application to register the mark IP TRANSLATOR for the Class 41 class heading. Although translation services do not fall within the class heading, the UK Intellectual Property Office raised an objection to the application as, following the 'class heading covers all' approach, translation services would fall within the wider coverage of Class 41.

The objection was appealed to the appointed person, who referred three questions to the ECJ: 

• "It 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?
• Is it permissible to use the general words of the class headings… for the purpose of identifying the various goods or services covered by a trademark application?
• Is it necessary or permissible for such use of the general words of the class headings… to be interpreted in accordance with [the 'class heading covers all' approach]?"

The judgment answered the first two questions in line with the advocate general's opinion. It confirmed that the specification of goods and services in an application must be clear and precise, being identified "with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought".

On the second question, the ECJ confirmed that the use of general terms from the class headings was permissible but subject to the same requirement for clarity and precision. So some general terms, such as "footwear", are likely to be sufficiently clear and precise while others, such as "medical apparatus and instruments", might not be.

However, the ECJ did not follow the advocate general on the third question. While the advocate general had advised that the 'class heading covers all' approach was not compatible with the requirement for clarity and precision, the ECJ found the practice acceptable subject to a couple of relatively minor refinements.

The first refinement specified by the court is that a specification covering the whole class should be deemed to cover all goods in that class only where there has been an explicit indication by the applicant that this interpretation reflects its intention. The second refinement is that a filing is deemed to cover all goods or services in the alphabetical list of goods and services for that class rather than, as under previous OHIM practice, any good or services potentially or theoretically falling within that class.

OHIM has already reacted to the decision by replacing its previous communication on this practice point with a new communication providing that for new applications it will be necessary to explicitly indicate whether the whole class is covered. It also provides that existing registrations and pending applications will be treated on the presumption that the relevant applicant had intended to cover the whole class. Retrospectively, OHIM's practice will remain, in effect, unchanged.

The difficulty with the decision is that it legitimises the 'class heading covers all' approach, which grants wide coverage to certain marks by implication. While this had already been an issue under previous OHIM practice in the narrow context of CTM registry proceedings, the present judgment suggests that the same approach would apply in national registry proceedings and, more worryingly, in infringement proceedings. For many economic operators, it is likely that their risk of infringement has been increased significantly for motives that have little to do with addressing any underlying legal imbalance and much to do with administrative convenience.

Hastings Guise, Field Fisher Waterhouse, London