OHIM’s class heading practice does not guarantee clear and precise specifications

European Union
Advocate General Yves Bot has given his opinion in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10, November 29 2011). The case is a rare example of a reference made to the Court of Justice of the European Union (ECJ) by the United Kingdom's appointed person and raises important questions relating to the scope of specifications.

Currently, there is a marked divergence in the interpretation of specifications between the UK Registry and the Office for Harmonisation of the Internal Market (OHIM). The OHIM practice holds that the class heading under the Nice Classification should be deemed to include all goods or services within that class, even if they do not fall within the scope of the explicit terms used. For example, a registration covering the Class 9 heading will be deemed by OHIM to include protective clothing, even though such items fall well outside of any of the broad terms mentioned in that heading. In the United Kingdom, meanwhile, only those goods or services explicitly set out in the specification are covered.

The present reference asked whether there is a particular requirement for clarity and precision in a specification and whether the current OHIM practice regarding class headings is legitimate.

Advocate General Bot went back to first principles. The essential function of a trademark is to indicate the commercial origin of goods or services, in accordance with the overall goals of the internal market. This context implies that a Community trademark (CTM) registration must not grant rights beyond those necessary for the trademark to fulfil this function.

Therefore, the specification of goods and services must be specified clearly and precisely so that competent authorities, and other businesses examining the Trademark Register, can accurately identify the scope of the right. The terms used in the specification must be intelligible and unambiguous and identify either the specific goods precisely, or identify the essential objective characteristics and properties of those goods.

Since the Nice Classification is purely administrative, and does not have legal status, the requirement for clarity and precision arises independently of the Nice Classification system. Consequently, while many of the terms appearing in the class headings are suitable for use in the specification of goods or services, the mere fact that a given general term appears in a class heading is no guarantee that the term may be used.

Finally, when addressing the OHIM 'class-heading-covers-all' practice, Advocate General Bot held that such a practice was incompatible with the requirement for clear and precise specifications. It was not possible to appreciate the range of goods and services that may be implicitly covered by a class heading. Furthermore, additional goods or services may be incorporated in a class as the Nice Classification evolves, creating the prospect that substantive rights could vary over time. These consequences are undesirable for motives of legal certainty.

Overall, if the ECJ follows Advocate General Bot's opinion, the OHIM will be obliged to adopt a more stringent examination of specifications and practitioners can expect to see a rise in specification objections. Furthermore, brand owners should review their existing portfolios and consider clarifying the scope of their rights where they have previously relied on broad class headings. However, in the long run these inconveniences will be a worthwhile price to pay for greater clarity in the scope of CTM rights. To remain an effective legal tool, CTMs must remain closely tied to realities of commercial life in the European market place, and a tighter, more rigorous specification practice throughout Europe will further this goal.

Hastings Guise, Field Fisher Waterhouse, London

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