In a long-anticipated judgment, the Court of Justice of the European Union (ECJ) has ruled, perhaps unsurprisingly, that when applying for a trademark, it is necessary to identify the goods and services for which protection of the trademark is sought with sufficient clarity and precision. According to the ECJ, this will enable both the authorities registering the mark and traders trying to assess the limits of their rights to determine the extent of the protection conferred by the trademark. Further, applicants are not precluded from using the general indications of the Nice Classification class headings, provided they satisfy the test for clarity and precision. More interestingly, and contrary to the opinion of the advocate general, an applicant can continue to rely on class headings as covering all goods and services within the alphabetical list in that class provided that the applicant specifically states its intention to do so in the application itself.
The case relates to the Nice Classification system for trademarks. The Nice Classification is maintained by the World Intellectual Property Organisation. Since January 1 2002 the list of classes has contained 34 classes of product and 11 classes of service. Each class is designated by one or more general indications, commonly called 'class headings', which indicate in a general manner the fields to which the goods and services belong in principle. Each class is then divided into a more extensive (but not exhaustive) alphabetical list of goods or services contained within that class.
OHIM Communication 4/03
In 2003 the Office for Harmonisation in the Internal Market (OHIM) sought to explain and clarify its approach to the use of class headings. Although the communication was not legally binding, OHIM confirmed that:
- it would not object to the use of general indications and class headings as being too vague or indefinite; and
- the use of the class heading constituted a claim to all the particular goods or services falling under that heading (the so-called 'class heading covers all' approach).
The Chartered Institute of Patent Attorneys (CIPA) applied to register IP TRANSLATOR as a UK trademark covering the Class 41 class heading "Education; providing of training; entertainment; sporting and cultural activities". 'Translation services' are not mentioned in this heading, but are included within Class 41. The UK Intellectual Property Office (IPO) interpreted the application in accordance with Communication 4/03, and on February 12 2010 concluded that it covered not only the services specified but also every other service covered by Class 41 (ie, adopting the 'class heading covers all' approach). Accordingly, the application was rejected on the basis that IP TRANSLATOR lacked distinctive character and was descriptive for translation services.
On February 25 2010 the CIPA appealed to the appointed person (the referring court), contending that since its application for registration did not specify translation services in Class 41, it should not be rejected on the basis that it was non-distinctive or descriptive for these services. The appointed person took this opportunity to seek long-awaited clarity on this issue.
In sum, the ECJ was asked to consider:
- the degree of clarity and precision required for the specification of goods and services covered by a trademark application;
- whether it is permissible to use the general words of the class headings for the purpose of identifying the various goods and services covered by a trademark application; and
- whether the "class heading covers all" approach is, or has ever been, compatible with EU law.
The advocate general's opinion was delivered on November 29 2011 and the judgment from the ECJ was handed down on June 19 2012.
The ECJ agreed with the advocate general that it is necessary to identify the goods and services for which protection of the trademark is sought with sufficient clarity and precision in order to enable the authorities registering the mark, and traders trying to assess the limits of their rights, to determine the extent of the protection conferred by the trademark.
The ECJ stated that, in principle, there was nothing to preclude the use of the general indications of the class headings of the Nice Classification to identify the goods or services for which the protection of the trademark is sought, provided that this use was sufficiently clear and precise to achieve the two goals set out above.
However, the ECJ did not rule out completely the use of the 'class heading covers all' approach, as had been expected following the advocate general's opinion. Rather, the ECJ stated that in order to achieve the required clarity and precision, the applicant must specify at the time of filing whether the class heading is intended to cover all the goods or services included in the alphabetical list of the particular class or only a subset of that list.
On a practical level, the judgment has provided much-needed guidance. However, the general consensus is that there is still much work to be done. There is still no real guidance for trademark applicants as to what constitutes a sufficiently "clear and precise" description of the goods or services. The positive news is that OHIM recognises this. it has recently issued a press release stating that it will work towards the development of a common practice as to whether each of the general indications of the Nice class headings are acceptable in terms of clarity and precision. OHIM has also confirmed that for applications made before June 21 2012, it will assume that the intention of the applicant was to cover all the goods or services included in the alphabetical list of that class; this has alleviated some of the concerns that trademark proprietors had regarding the scope of their existing registrations.
It remains to be seen how the IPO and other national European IP offices will now respond or whether a harmonised 'translation' of the case will be applied across all EU member states. As far as the UK position is concerned, further clarity should be achieved following the appointed person's decision in this case.
For further information on this topic please contact Paul Joseph or Louise Williams at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (firstname.lastname@example.org or email@example.com).
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