Patents Office publishes notice on IP TRANSLATOR and unacceptable class heading terms

The Irish Patents Office is the latest national IP office to publish a notice on its interpretation of the Delphic decision of the Court of Justice of the European Union (ECJ) in IP TRANSLATOR (Case C-307/10). 

The office considers that the answer to the first question in the decision - namely, that the goods and services must be identified with sufficient clarity and precision to enable the competent authorities and traders to determine the extent of protection of the mark - must take precedence over the answers to the second and third questions. The office went beyond that answer in stating that the scope of protection must be clear not only to the office and other traders but also to the general public, which had been accepted by the ECJ in previous cases (Sieckmann (Case C-273/2000)).

The office implicitly agreed with the answer to the second question, namely that the class headings may be sufficient to meet these requirements if they are sufficiently clear and precise. The office took this opportunity to bring in the consultation procedure which is underway between the national IP offices and OHIM on the terms in class headings which are considered too vague to meet this requirement. The office recently published a list of class heading terms which it considers are unacceptable and which require further clarification:

• Class 6 - Goods of common metal not included in other classes.
• Class 7 - Machines and machine tools.
• Class 14 - Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes.
• Class 16 - Paper, cardboard and goods made from these materials, not included in other classes.
• Class 17 - Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes.
• Class 18 - Leather and imitations of leather, and goods made of these materials and not included in other classes.
• Class 20 - Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
• Class 37 - Repair; installation services.
• Class 40 - Treatment of materials.
• Class 45 - Personal and social services rendered by others to meet the needs of individuals.

Some parts of these terms, such as “machine tools”, on their own are acceptable. It may be the case that certain other parts of these terms may also be acceptable on their own ("precious metals", "paper" and "cardboard" would seem to be sufficiently clear and precise to the writer). 

As regards the controversial third answer - namely, that an applicant must specify whether by using the full class heading, it intended to cover all goods or services in the alphabetical list of that class or specify the actual goods or services intended to be covered - the office has taken the same approach as the UK IPO and OHIM.  Thus, the office will not accept general indications such as “all goods in Class X” or the class heading plus “meaning all goods in Class X”. Instead, an application who intends to cover all goods or services in the alphabetical list must list each of those goods or services in the application. There is no automatic extension of coverage because of the use of the class heading and there is also no electronic method of importing the full alphabetical list like the OHIM 'tick box'.

Otherwise, the office will consider that an application including the class heading provides protection for those terms in their normal and natural meanings.

The office concluded its note with a useful discussion of its reasoning as to why it believes this to be the correct approach, based on the requirements for clarity and precision as well as its obligations under the Singapore Treaty, which is due to be implemented in Ireland this year. The office also indicated that it may object to indications containing “not included in other classes” as this would require a knowledge of the Nice Classification system and would not permit the scope of protection to be understood on the basis of the specification alone. It is instructive to note that many of the class heading terms deemed unacceptable include this qualifier.

Interestingly, the office did not state how it proposes to interpret applications and registrations containing class headings which predate IP TRANSLATOR, but the final sentence of the notice may provide a clue. This refers to “the established and accepted practices of the office that include the principle that specifications of goods and services must be considered to ‘mean what they say’”. This could indicate that any applications or registrations which predate IP TRANSLATOR and include class headings might be interpreted on a “means what it says” basis, rather than by looking back to the alphabetical list as it stood on the date of filing. This would be a significant departure from the approach taken by OHIM (Communication 2/12). It remains to be seen whether this would still permit 'clarifications' or 'limitations' of those pre-existing applications or registrations to specify terms not clearly covered by the normal and natural meanings of the class heading wording, for example to clarify “musical instruments” as “musical instruments including musical stands” in Class 15 or to limit “building construction; repair; installation services” to “vermin exterminating other than for agriculture” in Class 37. It would seem inequitable to impose a new literal reading of class heading terms on applications and registrations which predate IP TRANSLATOR, but we will have to wait for another day for this to be clarified.

Niamh Hall, FRKelly, Dublin and Belfast