Patent Office issues statement on class headings following IP TRANSLATOR


The ruling of the Court of Justice of the European Union (ECJ) in the IP TRANSLATOR case has been discussed at length in Iceland and, recently, the Patent Office has stated that, as of January 1 2014, applications for class headings will be interpreted on a “means-what-it-says” basis.

Until now, the Patent Office’s interpretation has been that registrations covering class headings should be granted the broadest possible protection for all goods and services. The details relating to the implementation of the Patent Office's announcement are not yet available, but it was confirmed that the change will not be retroactive.

Between 54,000 and 55,000 trademark registrations exist on the Icelandic Trademark Register. Of these, a large proportion covers class headings. A few historical facts should be considered in this respect, as they will cast a light on why exact implementation is crucial.

According to the Icelandic Trademarks Act of 1903, trademark registrations of (design) marks covered all goods, unless a more limited coverage was specified. Over the years, gradual changes were made in Icelandic trademark law, defining and limiting the protection afforded by registration.

Prior to 1968, registrations included translations into Icelandic of the lists of goods of the corresponding registrations from the applicant's home country. Classification according to the Nice Classification was not required, but such classification was later applied when these registrations were renewed. Therefore, the register changed gradually.

The Trademarks Act (47/1968) stipulated that trademarks should be registered in certain classes. Iceland did not become a party to the Nice Agreement until 1995 but, after 1968, applications were filed without reference to foreign registrations and according to the Nice Classification.

Class headings were translated into Icelandic and were available on the trademark application form, but no translation of the alphabetical list was available. Lists of goods were usually short, included class headings or the broad definition “all goods/services” of a given class, since trademark owners frequently wish to obtain the broadest protection possible.

Such general claims ("all goods/services") were accepted by the Patent Office until 1997, when the new Trademarks Act (45/1997) came into force, introducing a prohibition against applications “without specification”. The new act also included a provisional rule stipulating that the new rule requiring a specification would not affect existing registrations. Prior registrations would be subject to the new rule relating to specifications at the date of the next renewal, after the coming into force of the new law.

Furthermore, a new regulation stipulated that prior registrations covering all goods/services “without enumeration” should be renewed only if the application for renewal included “a specification according to the Nice Agreement”.

It was thus obligatory to adapt registrations at the next renewal. The Patent Office interpreted the change as meaning that class headings were accepted for application and renewal as being sufficiently clear regarding the goods/services and fulfilling the new requirement for a specification. Additionally, class headings were considered to cover the entire class, so there was no narrowing of the protection afforded.

When conflicts are resolved by the registration authorities and/or the courts, it is necessary to define the scope of protection afforded by each registration. All changes should therefore be published and applied in a clear manner in order to demonstrate respect for legal certainty and predictability.

The gradual development of registration practice up to now was reflected in two Supreme Court decisions, from 1983 and 2002, where the scope of the registrations was analysed in a clear and transparent manner. The registrations at issue did not include a precise list of goods/services, but the Supreme Court clearly analysed the legal basis of the protection afforded by the registrations.

The 1983 decision concerned a registration covering all 42 classes and all goods/services in each class, owned by Hekla Automotive. The registration was enforced against Hotel Hekla's registration of its company name for hotel services. The Supreme Court carefully defined the legal effect of this broad registration, and the company name registration was cancelled on the basis of that definition. The case did not concern the provisional rules. The list of goods was not precise or clear, as is required today. The relevant services (hotel services) were not even mentioned, since such services were considered to be covered by the ambiguous term “other services” in Class 42. The issue in this case was the (extremely) broad coverage that the district court had previously rejected.

Since use requirements were not introduced until 1994, it was possible to claim protection for all classes and all goods/services in each class and enjoy total protection, as long as the registration was renewed. This combination of broad coverage without use requirements resulted in court cases such as the one described above.

The Supreme Court decision from 2002 also focused on coverage. The judgment included an analysis of the provisional rules five years after the ban of the wording “all goods/services” entered into force, but before the renewal of the registration at issue.

The Supreme Court stated that the registration, granted under the Trademarks Act (47/1968), afforded protection for all goods and services in Classes 9, 35 and 36, including advertising services in Class 35, until renewal in 2007 when the specification should have been defined further. On the basis of this transparent analysis of the rules defining coverage, the claim of the appellant was accepted. Interestingly, the Supreme Court mentioned that the mark had not been used for advertisement services, but no cancellation action was brought before the courts. This case reflected that times had changed since the era of infinite protection, as expressed in the HEKLA decision. Volcanoes in Iceland may ignore the passing of time, but the Trademarks Act cannot do so, due to the influence of ECJ decisions such as IP TRANSLATOR.

It is a common understanding that owners of existing trademarks which, due to the previous practice of the Patent Office, are registered in respect of an entire class heading, should not have to tolerate a limitation of the protection granted to them.

As crucial changes are now on their way, the implementation of these changes should lay the foundation for future decisions.   

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík

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