Late yesterday, the Court of Justice of the European Union, sitting as the Grand Chamber, has issued its much awaited decision in the IP TRANSLATOR case (case C-307/10) dealing with specifications in trade mark applications and, more specifically, the admissibility and meaning of using the class headings of the Nice Classification. The Court has confirmed that specifications must, in general, be sufficiently clear and precise to allow the determination of the scope of protection of a registration, both for the authorities and for other economic operators. In line with that, the Court has also confirmed that class headings can be used, provided they are sufficiently clear and precise, stating that some (in practice: the majority) of the class headings fulfill that requirement, while others do not, and that it will be for the competent authorities to determine which do and which don’t on a case-by-case basis. More importantly, and for many surprisingly, the Court has confirmed that a trade mark applicant can, by indicating all class headings in any given class, effectively cover all goods or services in that class. The intention to do so, however, must be specified in the application.
The decision provides considerable comfort to the friends of class headings in trade mark applications and registrations. Of course it is yet to be seen how it will be implemented by national offices and courts, and by OHIM. In this regard, it will be interesting to see how the UK IPO will apply the judgment to the facts of the IP TRANSLATOR case.
With respect to future trade mark applications, one might expect applicants who want broad protection to add language such as "; the aforementioned covering all goods / services in this class" after indicating all class headings in any given class, and this should be in line with today's judgment of the Court.
It will be interesting to see what will happen to existing Community and national trade mark registrations that cover class headings while actually meaning "all goods / services", or indeed specific goods or services that do not fall under the immediate meaning of any of the class headings. For example, arguably "magnets" are not covered by any of the class headings in class 9, nor are wet suits, because there is no class heading in class 9 that extends to "magnets", and "wet suits" are deemed to fall under the class heading "life saving apparatus and instruments", although a wet suit is neither an apparatus nor an instrument. Nevertheless, traditionally, both belong to class 9. With situations such as this in mind, the question is whether OHIM and the national offices will allow "clarifications" or "limitations" for existing registrations and applications, whereby trade mark owners and applicants are allowed to add: "the aforementioned covering all goods/services in this class", or, alternatively, to add (sticking with the example above): "including magnets, wet suits".
OHIM is expected to issue a practice note very soon dealing with these issues and setting out the practical consequences of yesterday's decision. This guidance will be much appreciated from a trade mark owner perspective, and hopefully the national offices will quickly follow suit.
As regards the determination as to which class headings are sufficiently precise and which are not, this is a process already underway, although on a general and pan-European level rather than a case-by-case basis. The class headings project, which forms part of the Convergence Program currently run by OHIM in cooperation with all national offices and WIPO to foster modernization and harmonization of European trade mark law and practice, addresses precisely this question. In the course of this ambitious project, the national offices, OHIM and WIPO and even some non-EU offices with observer status are going through every single Nice class, to determine which of the class headings are acceptable as such and which are considered too vague and should be replaced by more specific terms. As a result, applicants will have a complete taxonomy of goods and services available in all EU languages that are accepted in all EU jurisdictions. This will give applicants legal certainty both as regards the acceptability of their classification and, more importantly, the scope of protection of the resulting registration across the EU.