IPO publishes Practice Amendment Notice on interpretation of trademark specifications

United Kingdom

In Practice Amendment Notice 01/12, the United Kingdom Intellectual Property Office (UK IPO) has clarified its approach to the interpretation of the specifications of trademark applications in light of the Court of Justice of the European Union (ECJ)’s ruling in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10).

On June 19 2012 the ECJ gave its decision in Chartered Institute of Patent Attorneys v Registrar of Trademarks (IP TRANSLATOR). The questions referred to the ECJ sought clarity as to the level of precision required in the specification of the goods or services covered by a trademark application. In its ruling, the ECJ placed the burden on the applicant to specify whether an application using a Nice Classification heading is meant to cover everything in that class. If it is not possible for the national registry to establish the applicant’s intentions in this regard, the application cannot be considered sufficiently clear and precise and must therefore be rejected. The ECJ considered that use of a Nice Classification class heading would be construed as including all those goods or services within the alphabetical list of the particular class concerned.

Practice Amendment Notice 01/12 sets out the UK IPO’s approach to specifications after IP TRANSLATOR and applies to applications filed after July 30 2012. The UK IPO notes the emphasis on clarity and precision in trademark specifications, so it will continue to reject broad claims to all goods or services in a particular class, such as a specification that states “all the goods in Class X”. Use of general indications (ie, class headings) is permitted, so long as each indication is clear and precise. Each general indication shall be given its natural meaning by the UK IPO when determining the scope of the protection sought.

The Practice Amendment Notice also deals with the use of the alphabetical list of goods or services for a particular class. The ECJ suggested that the use of a class heading in a specification should be construed as including all the goods or services in the alphabetical list. The UK IPO has made it clear that, if an applicant wishes to claim the goods or services included in the alphabetical list, it must do so expressly by including the list in the specification of the application. In this regard, the UK IPO’s approach differs to that of the Office of Harmonisation for the Internal Market (OHIM), which also issued an update on its approach to the interpretation of trademark specifications in light of IP TRANSLATOR. According to Communication 2/12 on the interpretation of the use of class headings in Community trademark (CTM) applications as of June 21 2012, CTM applicants relying on class headings will have to declare that they intend the application to cover all goods or services in the alphabetical list for the class, rather than include the list in the specification.

The reference in IP TRANSLATOR effectively asked the ECJ to decide which of the two approaches adopted in the European Community on the interpretation of trademark specifications should be preferred: the UK approach of 'means what it says' or the OHIM approach of 'class heading covers everything'. The decision has received criticism for avoiding giving a definitive answer on this point. Despite all the debate that has surrounded the case, we continue to see registries taking different approaches across the European Community and, although the difference in approach is a suitable one, it will undoubtedly ensure the debate will continue.

Leigh Smith, McDermott Will & Emery UK LLP, London

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