The IP Translator watch is finally over

June 21, 2012

On 19 June 2012, the Court of Justice of the European Union finally delivered its judgment regarding the legality of the of OHIM's class heading practice. (Link to the judgment.)

So, what is IP Translator?

The case relates to the lawfulness of the OHIM's practice that begun in 2003, which means that when a class heading in the Nice Agreement is used this covers all goods and services in that class.

The case itself is a reference to the court that arose from a UK application filed by The Chartered Institute of Patent Attorneys(CIPA) for the mark IP TRANSLATOR. The application was for the Class 41 heading, namely "Education; providing of training; entertainment; sporting and cultural activities".

The UK-IPO (UK Trademark Office) regards itself as bound by OHIM's practice on class headings for the purposes of examination. Consequently, it objected that the mark was descriptive of translation services because these fall within Class 41, even though they do not clearly fall within the scope of any items in the class heading. CIPA argued that translation services were not covered by the specification as claimed, and appealed the refusal. Three questions were referred to the Court for a preliminary ruling:

1) whether it is necessary to identify goods and services with clarity and precision and, if so, with what degree thereof;
2) whether it is permissible to use the general wording of a class heading for specifications; and
3) whether it is necessary or permissible to construe class headings as covering all goods or services in a class.

What did the Court say?

1) Goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision in order to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark based on the list of goods alone.

2) It is possible to use the general indications of the class headings of the Nice Classification referred 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. Each part of the Nice heading will need to be assessed on a case by case basis.

3) An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement 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.

What does the OHIM say?

The OHIM has reacted fast to the decision by issuing Communication No. 2/122 of the President of 20/06/2012 (repealing Communication 4/03) regarding its practice in the light of IP TRANSLATOR saying:

  • The Office will continue to accept class headings but on a case-by-case basis. Which terms that are acceptable will be specified in the guidelines of the Office.
  • For new CTM Applications it will be up to the Applicant to specify whether the application for registration intend to cover all the goods and services included in the alphabetical list or not (the OHIM is currently working on a user friendly way to do this).
  • For CTM registrations and pending CTM applications already filed that use the class heading, the Office will assume that it was the Applicant’s intention to cover all the goods and services in the class.

So, shall we all go back to using class headings in the EU?

One should keep in mind that by claiming protection for the entire class heading and all goods therein one is also creating a large target for third party Oppositions and future revocation and cancellation actions.
Due to the already cluttered CTM register in combination with the national trademark registers, national trade name registers, unregistered trademark rights and all other national rights that are possible grounds for opposing/cancelling one should in this humble attorney’s opinion be careful with class headings. This unless one is dealing with a very distinctive and original trademark or the client has interest in a wide sphere of goods or services.
In my experience Oppositions and later actions can often be avoided if a combination of wider terms and more specific terms that clearly show what goods or services the applicant intends to use the trademark for is used.

Kristian Martinsson
Attorney at Law, Head of Awapatent Branding team

21 June 2012