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 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.
Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, concluded at the Nice Diplomatic Conference on 15 June 1957, last revised in Geneva on 13 May 1977 and amended on 28 September 1979, to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.
An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of 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.
The Court tells the story substantially as follows: On 16 October 2009, CIPA, the Institute of British Patent Attorneys, had applied to register the designation ‘IP TRANSLATOR’ as a national UK trade mark. To identify the services covered by that registration, CIPA used the general terms of the heading of Class 41 of the Nice Classification, that is to say, ‘Education; providing of training; entertainment; sporting and cultural activities’.
The Registrar of the UK Intellectual Property Office then refused that application, by decision of 12 February 2010, on the basis of the national provisions corresponding to Article 3(1)(b) and (c) of Directive 2008/95. The Registrar interpreted the application in accordance with Communication No 4/03 and concluded that it covered not only services of the kind specified by CIPA, but also every other service falling within Class 41 of the Nice Classification, including translation services. For these latter services and according to the view taken by the Registrar the designation IP TRANSLATOR lacked distinctive character and was descriptive in nature. Moreover, there was no evidence that the word sign IP TRANSLATOR had acquired a distinctive character through use in relation to translation services prior to the date of the application for registration. There was also no request by CIPA for such services to be excluded from its trade mark application.
On 25 February 2010, CIPA then appealed to the Appointed Person (‘the referring court’), contending that its application for registration did not specify, and therefore did not cover, translation services in Class 41 in accordance with some sort of ‘it means was it says’ doctrine. For that reason, CIPA submitted that the Registrar’s objections to registration were misconceived and their application for registration had been wrongly refused.
According to the referring court, it is clear that translation services are not normally regarded as a subcategory of services relating to ‘education’, ‘providing of training’ ‘entertainment’ ‘sporting activities’ or ‘cultural activities’.
Moreover, according to the order for reference, 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 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) contains more than 3 000 listings.
The referring court points out that, if the Registrar’s approach were 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. It 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 referring court 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 following a different approach.
Now, the reasoning of the Court finally goes as follows:
According to the order for reference and to the observations submitted to the Court there are currently two approaches to the use of the general indications of the class headings of the Nice Classification, namely the approach corresponding to that derived from Communication No 4/03, according to which 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 that particular class, and the literal approach, which seeks to give the terms used in those indications their natural and usual meaning.
In that regard, most of the parties present at the hearing pointed out, in reply to a question put by the Court, that the existence, in parallel, of those two approaches was liable to affect the smooth functioning of the system for the registration of trade marks in the Union. In particular, it was emphasised that the two approaches may lead to a difference in the extent of the protection of a national trade mark if it is registered in several Member States, but also of the protection of the same mark if it is also registered as a Community trade mark. Such a difference might affect, inter alia, the outcome of an action for infringement, as such an action may have greater success in the Member States which follow the approach of Communication No 4/03.
Moreover, a situation in which the extent of the protection conferred by the trade mark depends on the approach to interpretation adopted by the competent authority and not on the actual intention of the applicant runs the risk of undermining legal certainty both for the applicant and for third party economic operators.
Accordingly, in order to respect the requirements of clarity and precision mentioned above, an applicant for a national trade mark who uses 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 sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned 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 for registration which does not make it possible to establish whether, by using a particular class heading of the Nice Classification, the applicant intends to cover all or only some of the goods in that class cannot be considered sufficiently clear and precise.
Thus, in the case in the main proceedings, it is for the referring court to determine whether, when it used all the general indications of the heading of Class 41 of the Nice Classification, CIPA specified in its application whether or not it covered all the services in that class and, in particular, whether or not its application was intended to cover translation services.
Hence, the procedure for trade mark applications which are still pending appears to be quite clear: The applicant needs to declare if protection is sought for all of the goods and/or services covered by the Class in question in accordance with the alphabetical list as maintained by WIPO, or, alternatively, provide a more detailed and specific list. My personal take is that Patent and Trade Mark Offices throughout the EU will have to look at trade mark applications with class headings more carefully. The judgement apparently goes somewhat into the direction of It means what it says. Perhaps in future there might be another tick-box on (paper or electronic) application forms where applicant can indicate “I mean everything falling under the class heading in accordance with the alphabetical listing maintained by WIPO“. Otherwise, Offices might even get more picky when examining applications based on class headings if there is the slightest doubt that the wording of the class heading taken alone is ambiguous with regard to the scope thereof.
But – the big question will be: what shall happen with regard to registered trade marks showing complete class headings in their list of goods / services if their scope of protection is rendered unclear in the light of today’s judgement? As the case under consideration was still in the stage of an application, the Court was not requested to answer this question. In may cases applicants having relied on class headings in order to obtain maximum scope of protection probably will argue their cases by referring to the general principle of protection of confidence based on Official statements issued by OHIM or other Patent and Trade Mark Offices.
The detailed alphabetical lists of goods and services actually listed under the roof of a certain Nice Class can be looked up on the Website of WIPO.
The EuroClass database maintained by OHIM is available here.
[UPDATE 2012-06-20] Following the publication of the Judgment of the Court in case C-307/10 – “IP Translator”, OHIM has repealed Communication Nº 4/03 and replaced it with Communication Nº 2/12.
Axel H. Horns
German & European Patent, Trade Mark & Design Attorney
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Some of the patent attorneys of the KSNH law firm have joined their efforts to research what is going on in the various branches of IP law and practice in order to keep themselves, their clients as well as interested circles of the public up to date. This blog is intended to present results of such efforts to a wider public.
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