Geoffrey Hobbs QC, sitting as the Appointed Person in an appeal against the refusal by the UK Intellectual Property Office to register the mark IP TRANSLATOR (Chartered Institute of Patent Attorneys' Application (Appointed Person) BL O-215-10, 27 May 2010), has referred questions to the European Court of Justice (ECJ) as to whether the Class headings from the Nice Classification constitute a sufficiently precise specification of goods or services in a trade mark application and, if so, whether such a specification should be interpreted to cover all of the goods or services under that heading.
Communication No 4/03 from the Office of Harmonization for the Internal Market stated that it was acceptable for the goods or services covered by an application or registration to be identified by means of wording that used the general indications or the whole Class headings provided for in the Nice Classification. The communication confirmed that the use of the Class heading or a general undertaking constituted a claim to all the goods or services within the relevant class or falling under the general indication.
CIPA applied to register IP TRANSLATOR for "Education; providing of training; entertainment; sporting and cultural activities". Since these words adopted the general words of the Class heading for Class 41, the Registrar concluded that the specification should be interpreted in accordance with Communication 4/03 and therefore covered translation Classes.
Since CIPA did not adduce evidence of acquired distinctiveness, or request that translation services be excluded from its specification of services, the mark was refused.
Geoffrey Hobbs QC noted that the particular degree of clarity and precision with which the various goods or services covered by an application must be identified so as to satisfy the requirements of Community law, remained unresolved.
If the general words of the Class headings were to be used and interpreted in accordance with Communication 4/03, then the coverage of an application would extend to goods and services not mentioned in the application or in any resulting registration.
Accordingly, Geoffrey Hobbs referred three questions to the ECJ: first, as to the degree of clarity and precision required in a specification of goods and services; second, whether or not it is permissible to use the general words of the Class headings for the purposes of identifying goods or services in a trade mark application; and, if so, third, whether the Class headings should be interpreted in accordance with Communication 4/03.
A reference to the ECJ on this point is overdue. A survey conducted in 2008 by MARQUES, the Association of European Trade Mark Owners, indicated an inconsistency between the practices of Member States. This creates significant uncertainty in circumstances where the protection of trade marks by registration at the national level under the Trade Marks Directive (2009/95/EC) is intended to be synchronised with protection at the Community level under the Community Trade Mark Regulation (207/2009/EC).