The Judgment dated June 19th issued by the Court of Justice (Grand Chamber), 2012, ruled a pre-trial motion in regards to the interpretation of Directive 2008/95/EC issued by the European Parliament and by the Council dated October 22nd 2008 to approach the legislations of the Member States concerning trademarks.
On October 16th 2009, the Chartered Institute of Patent Attorneys applied to register the designation “IP TRANSLATOR” as a national trade mark, using the general terms of the heading of Class 41 of the Nice Classification (common classification of goods and services to Register a trade mark which is managed by the World Intellectual Property Organization) to identify the different services within that Registry.
The Registrar, pursuant to the Communication no 4/03 of the Head of the Office for Harmonisation in the Internal Market (OHIM) dated June 16th 2003 (by virtue of which the use of all the general indications included in a specific class within the Nice Classification constitutes a claim for all the goods or services included in that particular class), refused that application as it was considered that it does not just cover services of the kind specified by the applicant, but also every other service included in Class 41 of the Nice Classification, including translation services, thus concluding that for these latter services the designation IP TRANSLATOR lacked distinctive character and was descriptive.
The applicant appealed against the mentioned decision to the referring Court who decided to put the proceedings on hold and to refer the case to the Court of Justice for different preliminary ruling:
It was raised if it was necessary to identify within a certain degree of clarity and precision all the different products or services for which it is applied a trade mark according to the European Directive and in such case, which shall be such degree.
It was also questioned whether it is permissible to use the general words of the class headings of the Nice Classification for the purpose of identifying the various goods or services covered by a trade mark application; and finally, whether it is necessary or permissible for such use of the general words of the Class Headings of the Nice Classification to be interpreted pursuant to the aforementioned Communication No 4/03.
In regards to the first matter set, The Court (Grand Chamber) ruled that the Directive 2008/95/EC must be interpreted to require that the goods and services for which the protection of the trade mark is applied, must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, solely on that basis, to determine the extent of theprotection conferred by the trade mark. In this sense, the financial operators must be able to acquaint by themselves, with clarity and precision those applications already registered or those applications in process of registration which may be submitted by their current or potential competitors, and thus obtaining relevant information about the rights of third parties.
Secondly, it was stated that Directive 2008/95/EC must be interpreted as meaning that it does not preclude the use of the general indications of the class headings within the Nice Classification with the aim of identifying the goods and services for which the protection of the trade mark is applied, providing always that such identification is sufficiently clear and precise.
Finally, an applicant for a national trade mark who may use all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is applied, must specify whether its application for registration is intended to cover all the goods or services included in the list of that class or only some of those goods or services named in the heading. In the event that the application concerns only some of those goods or services, it is necessary to specify which of the goods or services in that class are intended to be covered by the protection of a trade mark.