IP TRANSLATOR and class headings – what next?
The long awaited decision of the Court of Justice of the European Union (CJEU) in the IP TRANSLATOR case has been handed down. This follows the Advocate General issuing his opinion on the matter, as reported in our Spring 2012 newsletter.
History
CIPA applied to register IP TRANSLATOR as a UK trade mark listing the class heading for class 41, namely, “education; providing of training; entertainment; sporting and cultural activities”. The application was refused on the basis the mark was descriptive because “translation services”, although not specifically listed in the class heading, do fall within the ambit of class 41. Accordingly, the UK Intellectual Property Office referred the matter to the CJEU.
The decision
The main part of the CJEU’s decision can be summarised as follows:
1. The goods and services for which the protection of the trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.
2. It is possible to use the general indications of the class headings to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.
3. An applicant for a national trade mark who uses the general indications of a particular class heading to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
The CJEU’s decision does stress the importance of a harmonised practice on the classification of goods and services throughout the EU to ensure legal certainty for both the applicant and for third party economic operators.
Moving forward – the Community Trade Mark Registry (OHIM)
In view of the CJEU’s decision, OHIM has issued a press release as to how it will proceed in respect of trade marks which use the class headings.
OHIM will continue to accept the general indications of the class headings, albeit on a case-by-case basis.
With respect to Community trade mark applications filed following the date of the CJEU’s decision which use the class headings, the applicant must expressly indicate whether or not its intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class.
With respect to Community trade marks registered before the CJEU’s decision which use the class headings, OHIM will consider that the intention of the applicant was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.
As regards Community trade mark applications filed but not registered before the CJEU’s decision which use the class headings, OHIM will consider that the applicant’s intention is to cover all the goods or services included in the alphabetical list of the particular class concerned, unless the applicant specifies that it had sought protection only in respect of some of those goods or services in that class.
Moving forward – the National Offices of the EU Member States
At present, the Trade Mark Registries in Bulgaria, Estonia, Finland, Hungary, Italy, Lithuania and Romania take the standpoint that if the application lists the class heading, the applicant wishes to obtain protection for all the goods/services which fall into that class.
No indication has been given as to how these Trade Mark Registries will move forward following the CJEU’s decision. However, OHIM has stated that it will work with all the Trade Mark Registries of the EU Member States in order to determine which indications meet the requisite standard of clarity and precision and to work towards a common practice with regard to the acceptability of each of the general indications of the class headings.
