Following a recent referral to the European Court of Justice (ECJ), owners of Community Trade Marks (CTMs) and national trade marks in Europe should review their trade mark portfolio to ensure that their registrations are sufficiently broad to cover all of the goods and services in relation to which the trade marks are used.
In the UK and across the European Union, trade mark applications need to specify the goods and services they cover. The Nice International Classification system separates goods and services into different classes. Each class has a general description of what they cover, the "class heading". This is not an exhaustive list of the goods and services in that class.
Different trade mark registries have adopted conflicting approaches for interpreting specifications which use class headings. The UK Intellectual Property Office (IPO) is amongst the majority of EU national registries which generally apply a narrower approach of limiting the scope to the goods and services specifically listed in the class heading. Other trade mark registries including OHIM (the CTM registry) and national registries in Bulgaria, Estonia, Finland, Hungary, Italy, Latvia and Romania adopt a wider approach, interpreting the class heading list as if it covers all goods and services in the class, even if they are not expressly listed. These different approaches have led to inconsistencies in the scope of trade mark registrations across the EU.
However, this position may change as a result of a recent ECJ referral. The referral followed a UK trade mark application by the Chartered Institute of Patent Attorneys (CIPA) for "IP TRANSLATOR". CIPA specified the class 41 class heading: "Education; providing of training; entertainment; sporting and cultural activities." Class 41 services also cover translation services. While "IP TRANSLATOR" is descriptive of translation services, it is not descriptive of the services specifically listed in class heading 41. Unusually, the UK IPO adopted the wider OHIM approach and refused the application on the grounds that the mark was descriptive of the services applied for. CIPA appealed and the referral was then made by the Appointed Person.
The ECJ referral has asked for clarification on which approach is correct in EU law. Should the ECJ require that OHIM and the relevant national registries follow the narrower approach to class headings, this may narrow existing CTM registrations and other national registrations.