Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, IP TRANSLATOR, 19 June 2012
When filing a trade mark application, an applicant must state the goods or services that the trade mark is to cover, so clearly defining the scope of protection of the resulting trade mark registration. Goods and services are grouped together with broadly similar things into the 45 classes of the Nice Classification regime; 34 classes covering goods and 11 covering services. Each class has a general indication, or ‘class heading’, which is a reasonably brief summary of the kind of things that fall within that class. For example, the class 15 heading is "musical instruments".
Many applicants previously chose to use class headings as all or part of the list of goods or services covered by their trade mark application. Unfortunately, trade mark offices throughout Europe developed divergent practices when it came to interpreting the scope of protection when class headings were used.
On the one hand, many trade mark offices (such as the UKIPO) said that if a specific item does not fall under the literal meaning of the class heading, then it is not covered by the application, unless that item is also listed separately. On the other hand, other offices such as OHIM (the Community Trade Mark office) said the opposite – the presence of the class heading is a claim to all of the goods or services in that class, regardless of whether or not a specific item is explicitly mentioned. 17 of the EU’s trade mark offices fell in the ‘UKIPO’ camp, whilst 9 sat with the ‘OHIM’ position.
It is easier to understand the distinction between interpretations if class 15 is considered again. The UKIPO, for example, would have said that "music stands" are not covered by the presence of the class 15 heading, as they are not a sub-set of "musical instruments". In contrast, OHIM, for example, would have said the opposite – as the class 15 heading has been used and "music stands" fall within that class, they are protected.
The Chartered Institute of Patent Attorneys (CIPA) filed a UK application to register its IP TRANSLATOR mark. The application covered "education; providing of training; entertainment; sporting and cultural activities", which is the class 41 heading. The UKIPO examiner refused the application, saying that if examination was in accordance with OHIM’s practice, then the use of the class heading would mean that "translation services" would also be covered, since those services fall within class 41. As a result, the examiner considered the mark to be descriptive and non-distinctive.
CIPA appealed the refusal to the Appointed Person, saying that its application did not specify, and therefore did not cover, "translation services" (i.e. in accordance with previous UKIPO practice). The Appointed Person, in turn, referred the following three questions to the Court of Justice of the European Union (CJEU) in order to try to bring clarity to the situation:
- Is it necessary for the various goods or services covered by a trade mark application to be identified with any, and if so what particular, degree of clarity and precision?
- Is it permissible to use…class headings…for the purpose of identifying the various goods or services covered by a trade mark application?
- Is it necessary or permissible for such use of…the class headings…to be interpreted in accordance with [OHIM’s practice]?
The CJEU considered all three questions together in its decision back in June. It began by emphasising that the list of goods or services used in a trade mark application must be sufficiently clear and precise so that trade mark offices and national courts, competitors and other interested parties can determine the registrability of the application and the extent of protection given by the resulting registration.
Turning then to consider whether class headings are sufficiently clear and precise, the CJEU held that "some of…the class headings…are, in themselves, sufficiently clear and precise to allow the [trade mark offices] to determine the scope of the protection conferred by the trade mark, while others are not…where they are too general and cover goods or services which are too variable". The Court continued that it is for the trade mark offices and national courts "to make an assessment on a case-by-case basis…in order to determine whether [the class headings] meet the requirements of clarity and precision". In summary, the Court said that applicants can continue to use class headings, provided that the class heading used is sufficiently clear and precise, which is a matter for the trade mark offices and national courts to determine.
However, the CJEU also added that, in order to give greater "clarity and precision" an applicant who uses a particular class heading must also "specify whether its application is intended to cover all the goods or services included in that class or only some of those goods or services. If the application concerns only 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. An application…which does not make it possible to establish whether, by using a particular class heading…, the applicant intends to cover all or only some of the goods in that class cannot be considered sufficiently clear and precise."
Firstly, the repeated use of the terms "clear and precise" by the CJEU in relation to the list of goods and services obviously echoes the requirements when representing a mark in an application. It is encouraging that the Court is trying to adopt a degree of consistency with its findings. It should also be noted that, although the CJEU demands "clarity and precision" from the list of goods or services, broad terms such as "pharmaceutical preparations" in class 5 should still be acceptable. This is in contrast to other territories around the world, most notably the US, where goods or services have to be very exactly stated. For example, the USPTO require a claim for "pharmaceutical preparations" to also identify the disease or disorder being treated by the drug.
Whether or not any of the 45 class headings are sufficiently "clear and precise" was seemingly left by the CJEU for the national trade mark offices and OHIM to determine independently. This is not a particularly satisfactory outcome, as where there were previously two standpoints on the issue (typified by the UKIPO’s and OHIM’s differing perspectives), now there could, in theory at least, be 26 different views if each EU trade mark office were to reach different conclusions on which class headings are acceptable and which are not.
In 2011, OHIM established a working group to consider the matter of ‘convergence of class headings’, with the aim of finding a compromise between the two previous interpretations and the interim uncertainty. The working group’s stated objectives are to develop a commonly acceptable set of comprehensive classification terms covering all goods and services in a given class at a given time, to develop an implementation strategy and to analyse possible implications for the past. It is believed that the preliminary findings of this working group will be communicated in the coming months.
The UKIPO’s response to the CJEU’s decision has been to merely re-affirm its previous viewpoint – that is that if an applicant wants its application to cover all of the goods or services in a particular class, then it should explicitly name those goods or services in the application. The UKIPO will still accept the constituent wording of class headings in the list of goods or services for an application, but will simply give them their normal and natural meaning and not interpret them more broadly.
In contrast, OHIM’s response has been to make some significant changes to the application procedure. If an applicant now uses the class heading wording, it will be asked whether or not the use of this wording is to be interpreted as a claim to all of the goods or services in that particular class. If the applicant answers in the affirmative, the full alphabetical list of goods or services will then be automatically inserted after the class heading wording. The alphabetical list is also part of the Nice Classification system and is a vastly more comprehensive list of terms falling within each class.
OHIM’s response doesn’t seem to be a particularly satisfactory solution, since many of the alphabetical lists contain several hundred terms. For instance, class 9 has 824 terms, whilst class 1 has 897 terms. This will surely lead to extremely long lists of goods and services, especially for multi-class applications, which will arguably make them less clear and precise. The new lists will certainly make trade mark clearance searching a much more difficult exercise. Also, it is arguable whether the alphabetical lists actually cover all of the goods or services in a particular class (the UKIPO has commented that "the CJEU makes reference to goods and services in the alphabetical list, not all the goods or services in the class").
Finally, trade mark applications made at OHIM prior to the IP TRANSLATOR judgement and featuring the class headings will still be interpreted by OHIM as being a claim for all of the goods or services in the corresponding class, since this was OHIM’s guidance to applicants at the time. So, applicants and trade mark practitioners will not only have to be mindful of different practices between different offices, but also different practices depending upon the age of an application or registration, surely leading to yet more confusion.