On Tuesday 19 June 2012, the European Court of Justice (CJEU) handed down its eagerly awaited decision in the IP Translator case (Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10) concerning the use of the Nice Classification class headings in trade mark applications in a reference from on Appeal from the UK Registrar of Trade Marks, referred by the High Court of England and Wales to the CJEU.
This was a test case intended to clarify the law on the scope of specification of goods and services in European trade mark law. While the CJEU's decision that the Nice class headings can be used if they are "clear and precise" does provide some guidance, the Court's reasoning leaves open as many questions as it answers. Since the decision, the Community Trade Mark Office (OHIM) has already issued a new Communication to align its practice with that set down in the decision. OHIM has also convened a meeting with Member State national offices in order to work towards a uniform approach. We consider these developments and the implications for practice below.
Background to the case
By way of background: in Communication 4/03 (now superseded), OHIM had established what had come to be known as "class heading covers all" approach. That Communication stated: "... the use of all general indications listed in the class heading of a particular class constitutes a claim to all goods or services falling within this particular class." This was in contrast to different practices in various EU national trade mark offices (including the UK) who adopted a more literal approach, which gives the terms used their natural and usual meaning.
In light of this diverging approach between OHIM and national offices, The Chartered Institute of Patent Attorneys (CIPA) filed a UK application, which was filed as a "test" case to prompt a decision from the CJEU and hopefully bring clarity to the issue of class headings. The application was filed for the mark IP TRANSLATOR in respect of the Class 41 heading "Education; providing of training; entertainment; sporting and cultural activities". "Translation services" was notably absent from the specification filed. The UK-IPO refused the application arguing that the mark was descriptive of some of the services. CIPA appealed the refusal to the Appointed Person (Geoffrey Hobbs QC) who then referred the question to the CJEU on whether the class heading does indeed cover all items in the class.
The CJEU's decision
In its decision of 19 June 2012 the CJEU found:
- The Trade Mark Directive 2008/95 does not preclude the use of the general indications of the class headings of the Nice Classification to identify goods and services. However, the specification must be sufficiently "clear and precise" to allow the competent authorities and economic operators to determine the extent of the protection sought under the respective mark.
- 'Some' of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise, while others are too general and cover goods or services which are too varied to be compatible with the trade mark's function as an indication of origin.
- It is for the competent authorities to make an assessment on a case-by-case basis in order to determine whether those indications meet the requirements of clarity and precision.
- An applicant for a national trade mark who uses all the general indications of a particular Nice class heading must specify whether its application is intended to cover all the goods or services included in the alphabetical list of that particular class - although how precisely this is to be expressed was left open by the Court.
- If a trade mark application only covers 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.
OHIM Communication 2/12
In light of the decision, OHIM reacted swiftly and on 20 June 2012 issued a press release stating that a meeting with national offices within the EU has already been convened with the aim to work towards a common practice. OHIM also released a Communication 2/12 which has entered into force on 21 June 2012 and replaced Communication 4/03. As expected Communication 2/12 confirms that a change in practice will be adopted, bringing it into line with the guidance given in the IP Translator decision.
What does this mean in practice?
Longer and more detailed specifications: To ensure satisfying the "clear and precise" requirement, there may be reason to submit longer and more detailed specifications - at least until further guidance is given and a new practice has been firmly established. However, how the Court's decision will impact issues like Convention Priority within the EU and internationally as well as international registrations under the Madrid System is unclear, bearing in mind that offices outside the EU have adopted their own practice. Indeed, the CJEU's decision also allows national offices within the EU to retain their own, potentially differing, practices, although according to OHIM's press release, steps towards a more unified practice are already being made.
Depends which class: The guidance from the CJEU appears to lead to different approaches for different Nice classes depending on whether the Nice heading is in itself "clear and precise" (e.g. the Nice class heading for Class 25 appears to be "clear and precise", whereas the coverage of Nice class heading 9 leaves space for interpretation).
Impact of registrations/pending applications: In Communication 2/12 OHIM states that CTM registrations and applications filed before the release of the Communication will be treated as though they were intended to cover all the goods and services in the class heading unless stated otherwise. It is, however, currently unclear how the decision will affect the scope of pending national applications and granted marks in EU Member States who also adopted the "class heading covers all" approach. Equally unclear are the consequences for opposition, invalidity and revocation proceedings, including the issue of genuine use.
This is unlikely to be the last we will hear of this issue and we await to see the results of the discussion between OHIM and the EU Member States to see if a harmonised approach can be adopted and clear guidelines in respect of the use of Nice class headings provided for trade mark applications throughout Europe.