Summary and implications
A formal opinion issued today in the widely-followed IP Translator (C-307/10) case puts a nail in the coffin of the “class heading” approach to filing Community (i.e. EU-wide) trade mark applications.
According to the Advocate General of the EU’s Court of Justice (CJEU), trade mark specifications that use “class heading” language should be taken to mean (only) what they say, rather than being taken to cover the whole content of the class.
The effect may be a narrowing of protection for many existing EU trade marks – meaning that some trade mark owners will need to consider new trade mark applications to make up the deficit.
The opinion also calls, more generally, for greater precision in EU trade mark specifications. They should be unambiguous, and clearly define the essential characteristics and objective properties of the goods and services concerned. These remarks go deeper, and would (if the opinion is reflected in the ruling of the CJEU, in a few months’ time) raise doubts in relation to many existing EU trade marks.
Quite how far any remedial action would have to go is as yet unclear. We must hope that the CJEU ruling gives some clear direction on the extent of the problem. In the meantime, in light of the Advocate General’s opinion, trade mark owners should start to look at their EU trade mark coverage. They should:
- Review the wording of their trade mark specifications to see if the language (a) fully reflects the scope of goods and services for which they use the trade marks; and (b) is clear and precise about the nature of the goods and services covered;
- If not, start to plan remedial action, which may include new applications to fill any gaps that are now apparent to avoid later problems in enforcement.
Trade marks are registered in respect of selected goods and/or services. These usually correspond, at least in the main, to the core business of the trade mark owner.
For ease of administration, the universe of goods and services is divided amongst 45 separate classes. The coverage of each class is described in general terms by a class heading. For example, the class heading for class 45 is “Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.”
Although the class headings provide a general description of the class coverage, they do not describe everything within it. For instance, class 35 covers retail services, but there is no reference to retail services in the class heading.
Development of a class heading approach
The “class heading” approach is a phenomenon of the EU trade mark system and in marked contrast to the traditional approach to specifying goods and services. In the US, trade mark law and practice has required trade mark applicants to define their goods and services narrowly. In the UK a similar (but less rigorous) practice has developed, since the applicant is required to declare an intention to use the trade mark for the goods and/or services that they specify.
However, when the possibility of obtaining a pan-EU trade mark registration (i.e. a Community trade mark) was introduced in 1996, the facility encouraged applicants to claim much broader coverage, often corresponding to the entire content of one or more classes. Many brand owners seized this opportunity with enthusiasm and, rather than reciting a long list of goods or services falling within the class(es) concerned, merely recited the wording of the class heading.
The question then arose: how should “class heading” wording be interpreted? Should it be taken to cover everything within the class (as the applicant’s attorney usually intended) or just the things actually referred to in the class heading? Referring to the earlier example, if the specification uses the class 35 class heading but does not add wording referring to retail services, does the trade mark cover retail services?
Unhappily, this question has been answered in different ways by different trade mark authorities. The body responsible for the Community trade mark, OHIM, has opted for the wider interpretation, whereas various national EU trade mark bodies – including the UK IPO – have opted for the narrower view. This is a real practical problem because it creates great uncertainty and unevenness in decisions around the EU. Hence the IP Translator case, which has asked the CJEU for a definitive ruling that will provide a single answer that will hold good in all situations.
The CJEU has yet to rule. However, the influential opinion of the Court’s Advocate General today suggests that “class heading” trade mark specifications should be read in the narrower sense. What is more, in some cases the often broad language used in the class headings could be regarded as too vague to suffice for the purpose of a trade mark specification. This, too, could create enforcement problems.
If the opinion is followed by the CJEU when it rules in the IP Translator case, it would mean that many brand owners do not have the European trade mark protection that they have counted on. With the court ruling just a few months away, companies that rely on Community or other EU trade marks using “class heading” language should start to review their EU trade mark portfolios now, and may need to consider new trade mark filings to fill gaps and/or give better definition to their trade mark claims.