Class Headings Dispute: Heavy Weather Ahead For OHIM

Today, in the Court of Justice of the European Union the Opinion of Advocate General BOT concerning Case C‑307/10 has been delivered (Chartered Institute of Patent Attorneys v Registrar of Trade Marks (Reference for a preliminary ruling brought by the Person Appointed by the Lord Chancellor under Section 76 of the  UK Trade Marks Act 1994, on Appeal from the UK Registrar of Trade Marks, submitted by the High Court of Justice of England and Wales (United Kingdom)).

What is the matter?

Well, I do think there is a broader context as follows: If someone applies for the registration of a trade mark, a specification of goods and/or services must be provided in order to determine the scope of the registration. This is general practice in all jurisdictions and applies also with the OHIM concerning examination of applications for a EU Community Trade Mark under Regulation (EC) No 207/2009.

In theory, applicant naively might think that the list of goods and/or services should be composed of items describing specific goods or services, e.g.

“hoses for coolant water in motor engines”

Some jurisdictions encourage or even prescribe a wording specifically describing goods and/or services actually on sale. If you need an example, have a random look into the U.S. database of registered trade marks.

But Europe is different. In particular, it is highly fragmented with regard to languages. I won’t go into the legal details here but if you have a look at any Certificate of Registration issued by OHIM for a Community Trade Mark you will find the specification of goods and services presented in no less than twenty-two languages (BG, ES, CS, DA, DE, ET, EL, EN, FR, IT, LV, LT, HU, MT, NL, PL, PT, RO, SK, SL, FI, SV, to be precise). These translations from the language of the application proceedings into twenty-one others are to be provided for each application by OHIM ex officio.

Of course, in view of this burden there is some temptation on the side of OHIM to ease the work of managing and translating myriads of snippets of descriptions  of goods and services by nudging applicants towards re-using phrases that have been checked and translated earlier, thereby actively discouraging filing of applications with lists of goods and/or services freely drafted without reference to any Official thesaurus. In order to facilitate this, OHIM provides a EuroClass database helping applicants not only to find the correct Nice Classification for certain goods and/or services but also creates a tendency towards re-using standardised wording snippets. Everyone who ever has filed for a EU Community Trade Mark with OHIM using the electronic filing facility on their website knows that entering a free wording of goods and/or services causes a yellow warning triange to appear on the screen despite the fact that the Regulation does not require to use standardised language.

But earlier OHIM already had gone one step further. As early as in 2003, with Communication No 4/03 of the President of the Office, stipulation was made as follows:

It constitutes a proper specification of goods and services in a CTM application if the general indications or the whole class headings provided for in the Nice Classification are used. The use of these indications allows a proper classification and grouping. The Office does not object to the use of any of the general indications and class headings as being too vague or indefinite, contrary to the practice which is applied by some national offices in the European Union and in third countries in respect of some of the class headings and general indications.

And further:

The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.

Similarly, the use of a particular general indication found in the class heading will embrace all of the individual goods or services falling under that general indication and properly classified in the same class. For example, the use of the general indication “Pharmaceutical and veterinary preparations” in class 5 will embrace all pharmaceutical preparations regardless of their composition or indication.

Hence, OHIM would like to suggest applicants to just file class headings, and all is fine. Applicant gets maximum protection for all goods or services in the respective class of the Nice Classification, and OHIM has virtually no work with translation and fiddling  admissibility of long and complicated lists of goods and services. Of course this assumption not only has effects when applying for a CTM but also when it comes to assessing infringement – but maybe that matters less at OHIM.

From the start, this doctrine was greeted with some suspicion concerning its validity by some lawyers and patent attorneys. However, OHIM took it for granted up to now, and in its web based facility for electronic filing of applications for EU Community Trade Marks nobody can escape to insert class headings in a first step into a fresh application form – with an option to remove or alter the class headings text later, duly warned by the yellow triangle warning sign that you ought not to do this kind of insubordinate deviation from OHIM’s path of proper applicantship.

Now, time is nigh to see if this doctrine is valid. The story told by the Attorney General’s Opinion goes as follows:

The UK Chartered Institute of Patent Attorneys (‘CIPA’) applied to the UK Registrar of Trade Marks (‘Registrar’), on 16 October 2009, for registration of the designation ‘IP TRANSLATOR’ for the products in Class 41 of the Nice Classification, headed ‘Education; providing of training; entertainment; sporting and cultural activities’. The Registrar examined that application on the basis of Communication No 4/03 and refused it. Since the application referred to the heading of Class 41 of the Nice Classification, the Registrar examined whether there were absolute grounds for refusing to register having regard to all the services in that class, including translation services. The Registrar considered that the trade mark ‘IP TRANSLATOR’ was descriptive in relation to those services and therefore refused to register it. CIPA appealed against that decision, contending that its application for registration did not specify and was not intended to cover the translation services in Class 41 of the Nice Classification. According to the Person Appointed by the Lord Chancellor under Section 76 of the UK Trade Marks Act 1994, on Appeal from the Registrar of Trade Marks, United Kingdom, those services are not normally regarded as a subcategory of ‘education’, ‘providing of training’, ‘entertainment’, ‘sporting and cultural activities’. According to the documents submitted to the European Court of Justice, in addition to the alphabetical list which contains 167 listings for the itemisation of services falling within Class 41 of the Nice Classification, the database maintained by the Registrar for the purposes of the 1994 Act contains more than 2 000 listings for the itemisation of services falling within Class 41 and the Euroace database maintained by OHIM for the purposes of the Regulation contains more than 3 000 listings.

If the Registrar’s approach is correct, all such itemisations, which include translation services, would be covered by CIPA’s application for registration. In that case, the coverage of the application would extend to goods and services not mentioned in the application or in any resulting registration. The UK national referring body takes the view that that interpretation is incompatible with the requirement for the various goods and services covered by a trade mark application to be identified with clarity and precision. The national referring body also refers to a survey conducted in 2008 by the Association of European Trade Mark Owners (Marques), which indicated that practice varies among the Member States, with some competent authorities applying the approach to interpretation envisaged by Communication No 4/03 and others declining to do so. 98.

In the light of the foregoing considerations, Attorney General Bot now has proposed that the Court of Justice reply as follows to the questions referred for a preliminary ruling by the Person Appointed by the Lord Chancellor under section 76 of the Trade Marks Act 1994, on Appeal from the Registrar of Trade Marks, submitted by the High Court of Justice of England and Wales:

(1) (a) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark are to be interpreted as meaning that the identification of the goods or services for which the applicant seeks protection must satisfy requirements of clarity and precision which are sufficient to enable the competent authorities and the economic operators to determine accurately the scope of the protection conferred by the trade mark.

(b) Those requirements may be satisfied by a specific list of each of the goods and services for which the applicant seeks protection. They may also be fulfilled by identification of the basic goods or services enabling the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned.

(2) Directive 2008/95 and Regulation No 207/2009 are to be interpreted as not precluding the applicant from identifying the goods or services for which he seeks protection by using the general indications of the class headings of the common classification of goods and services for which a mark is registered, provided that that identification satisfies the necessary requirements of clarity and precision.

(3) Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade marks and designs) (OHIM) of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, by which the President indicates that OHIM does not object to the use of any of the general indications and class headings as being too vague or indefinite and that the use of those indications constitutes a claim to all the goods or services falling within the class concerned, does not guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether a national or a Community trade mark.

It should be emphasised that the Court still is absolutely free to deviate from the opinion of the Attorney General. However, in accordance with the general practice of the Court, it is likely that the Court will eventually decide along the lines as presented today.

If the Court adopts the lines of the Opinion, consequences with respect to OHIM practice should be perceivable. There should be no longer any nudging applicants towards class headings. Quite another matter is what happens with elder applications filed and registered in view of and trusting the Communication 4/03 of the President of OHIM which may have an improperly defined and, hence, substantially inadmissible list of goods and/or services.

(Photo: (C) 2009 by Dominic’s pics (Dominic Alves) via Flickr licensed under the terms of a CC license.)