Brand Owner’s Association Opposes OHIM’s Interpretation of IP TRANSLATOR Judgement (CJEU C-307/10)

MARQUES leaving its fingerprint on the interpretation of class headings

Yesterday evening, MARQUES, an association of worldwide brand owners that is an accredited organisation before the OHIM (cf. OAMI Users’ Group) and observer at the OHIM Administrative Board, has made a noteworthy move as it offered its interpretation of the conclusions to be drawn from the final judgement of the CJEU in case C-307/10 IP TRANSLATOR (see earlier report) in an open letter sent to the national IP offices of all EU member states, the Benelux IP office, and the Office for Harmonisation in the Internal Market itself. The letter is undersigned by Nunzia Varricchio, Chair of MARQUES Council, and my partner Jochen Höhfeld, Chair of MARQUES Trade Mark Law and Practice Team.

As already summarised here, the trademark application ‘IP TRANSLATOR‘ was launched as a test case by the Institute of British Patent Attorneys (CIPA) to obtain a review of OHIM‘s practise as to the meaning of class headings by the CJEU. The national UK trademark ‘IP TRANSLATOR’ was claimed for ‘Education; providing of training; entertainment; sporting and cultural activities’, i.e. the class heading of Class 41 of the Nice Classification. The UK IPO refused the application on the basis of Article 3(1)(b) and (c) of Directive 2008/95 and OHIM Communication No 4/03, according to which the trademark covers all services falling within Class 41, so that the trademark was considered lacking distinctive character and being descriptive in nature for “translation services”, which also falls within Class 41. The subsequent appeal to the referring court raised that the application did not specify, and therefore did not cover, translation services. The issued decision appears quite clear on this problem, as it clarifies

• that the goods and services must be identified with sufficient clarity and precision to enable third parties, on that basis alone, to determine the extent of protection;
• that the general indications of the class headings may be used provided they are sufficiently clear and precise; and
• that, if (all general indications of) a class heading is used, this will not be considered to cover the entire class if this is not considered sufficiently clear and precise (no. 62). In this case, the applicant would have to specify the goods and services further.

Thus, the CJEU clearly voted for the means-what-it says approach.

Following the publication of the Judgment of the Court on 19 June 2012, OHIM announced only one day later that

[i]n accordance with the Court’s ruling, the Office is updating its filing systems to provide a user-friendly solution when using class headings to claim protection for all of the goods or services in the alphabetical list of the Nice Classification. This update is expected to be in place over the next few days. In the meantime, an interim solution has been implemented and is accessible via the Office’s website.

Another day later, on 21 June 2012, Communication Nº 4/03 was repealed and replaced by the new Communication Nº 2/12 that draws the conclusion that

an applicant for a trademark 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. [...]

and announces that the application process and the trademark register will be adapted so that it is clear whether or not all goods and/or services in the alphabetical list of a specified class are covered. This is done in practice via a checkbox which, when checked, indicates that in fact all goods/services of the respective class are claimed by the applicant. Apparently, the applicant’s respective would read

By using the Nice Agreement class headings in my list of goods and services, I hereby confirm that I am applying for all of the goods or services included in the alphabetical list of each class field.

This practice, however, is strongly criticised by MARQUES as it leaves the public in doubt as to which goods and/or services are claimed exactly. As opposed to the CJEU’s demand, according to which the scope of a trademark is required to be determined on the basis of the identified goods and services alone, the applicant additionally needs the correct version of the Nice classification and study the alphabetical list (pdf) of goods/services of the respective class to concretely determine the goods and services covered by the trademark. The MARQUES statement – nicely printed in the association’s corporate colour – reads as follows:

Court of Justice of the European Union (hereinafter CJEU) has handed down its judgement in Case C-307/10 – generally referred to and known as the  “IP Translator” case – on 19 June 2012.

Discussions have arisen soon thereafter on how the CJEU’s ruling has to be interpreted, notably in connection with the CJEU’s third answer relating to the “extent of protection resulting from the use of all the general indications of a particular class heading” of the Nice Classification.

By the present letter, we would like to explain how MARQUES interprets the judgementof the CJEU and the reasons for our interpretation. In fact, not only we consider that our understanding would truly reflect a correct interpretation of the CJEU’s ruling, but we also fully believe that this is the interpretation that best reflects the interests of the brand owners, i.e. the users of the trademark registration system.

The answers given by the CJEU in response to the questions referred to it are:

1. Directive 2008/95 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 (emphasis added) to enable the competent authorities and economic operators, on that basis alone (emphasis added), to determine the extent of the protection conferred by the trade mark;

2. 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 Nice Classification 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 (emphasis added);

3. 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 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.

At a prima facie analysis, the above third answer would seem to indicate that the CJEU would consider it acceptable that, if an applicant wants to cover all goods or services of a particular class, the applicant must simply recite all general indications of the respective class heading along with a declaration that, by reciting the particular class heading, the applicant intends to cover all those goods/services that (at the time of filing) belong to the corresponding alphabetical list of that particular class.

However, looking at  this answer  more  attentively, the CJEU does not  say this. The CJEU merely states that an applicant, who recites an entire class heading in the specification, has to specify the goods or services if he does not wish that all the goods or services of that class are otherwise meant to be covered. The CJEU does not positively state in the third answer what the applicant has to do when he really intends that all the goods or services of that class are meant to be covered.

Clearly, the third answer must not be interpreted in a manner that would contradict the first or second answer. Thus, if the third answer was interpreted  to represent that – by reciting all general indications of a class heading and  by submitting a declaration to the extent that with such recitation all goods or services of that particular class are intended to be covered – such interpretation would not obviously respect the condition as represented in first answer given by the CJEU, namely that there must be a clear and precise identification of the goods or services that would allow  the competent authorities and any  third parties to determine the extent of protection conferred by the trade mark, especially in those cases where the class heading terms are not literally covering all the goods or services of that particular class (e.g. in class 41, any of the class headings would not literally cover translation services). Accordingly, such an explanation cannot be  regarded as  the right interpretation of the CJEU’s third answer, as  itwould clearly contradict the CJEU’s first answer.

Hence, what is the right interpretation of the CJEU’s ruling?

The CJEU  itself  gives  express clarification in the very last paragraph of  its judgement, bystating that:

63  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 (emphasis added).

Thus, according to the CJEU, the applicant has to “particularly specify in the application” the specific goods or services that would have to be covered (in this case “translation services”) if such coverage is not sufficiently clear and precise by making use of the general indications of that particular class heading(s) alone.

MARQUES fully supports the above mentioned explanation of the CJEU and strictly interprets the IP Translator judgement according to the clarity and precision requirements, because only such interpretation provides an explanation which does not contradict the CJEU’s ruling in its first answer and also in its  entirety. Moreover,  it would fully be in  the interest of the brand owners, and we would like to remark that it is the brand owners’ interest which should be warranted in interpreting this ruling, as brand owners are the users of the registration trade mark system.

Why is the interpretation supported by MARQUES in the brand owners’ interest?

There are many reasons and among these, a very striking and explanatory reason takes its justification from the following facts.

Many of the economic operators who make use of the registration trade mark system and other related tools are SMEs. In general, business people or managers, notably those running SMEs,have  little or even  no focused knowledge  of the Nice Classification system but for the strict basics. When they are supposed to monitor the registers and/or assess trade mark rights of either particular competitors or any other third parties, they  would simply  avail themselves of the information as obtained from the publication of trade mark applications or registrations in the pertinent registers. If these users had to peruse any statements made in a trade mark application or registration  to the effect  that all goods or services of a particular class are intended to be covered (according to the alphabetical list of that particular class), they would not reasonably understand  the extent of any such statement on that basis alone. Even in case they  could understand it, they would have to  engage themselves into a burdensome process, in order to retrieve the Nice Classification, assess its general aims and class scopes and further find out what the alphabetical list of goods or services for that particular class would actually include.

Based on the fact that the Nice Classification has been subject to revision and update over the years,  if the trade mark  concerned  by the assessment  was  20  or even only 5  years old, they would have to know that account must be had to the  alphabetical list  in force at that time. Supposed that it could be found,  the entire list of terms of that alphabetical list of goods  or services ought to be carefully studied to hopefully find out which the scope of protection of the trade mark for that particular class would actually be. As a trade mark application or registration may cover more than one class, the same exercise ought to be equally repeated for any other of the classes that were identified in that application or registration in the same or similar indefinite 4ways. It is self evident that this is not something that users, in particular SMEs, can afford for or work with. To the extent that users cannot work with such a  practice, the system would not provide the legal certainty  and consistency  that it is  expected and  supposed to  warrant. Moreover, such a practice would clearly  conflict with  the CJEU’s  ruling in its  first answer (“…with sufficient clarity and precision … on that basis alone”), as set out above.

Is there any way to cover in a specification of goods and services all the goods or services of a particular class in a clear and precise manner?

Before answering this question, it should be considered whether and to which extent there is any need for an applicant to cover all the goods or services of a particular class of the NiceClassification.  In fact, it is  MARQUES’ opinion that applicants should be encouraged to specify in the list of goods and services only those particular goods or services in which they are really interested and that would ensure appropriate coverage of any reasonable future developments of their business including possible future developments, rather than  attempt to cover an entire class irrespective of its specific contents and any fair need.

In this  frame,  MARQUES appreciates the initiative put forward by the OHIM under the Convergence Programme with a view to harmonise the practices of Classification and the use of Class Headings, on the grounds of a set of principles for a new common practice based on the so-called Taxonomy.

The Taxonomy provides a hierarchical structure of basically all goods and services of the Nice Classification with the most specific terms  defined  at the bottom and the most general terms identified at the top of the hierarchy. Applicants can make use of these general terms, whenever broad coverage is needed.

The Taxonomy is expected to be implemented by the end of this year. On the basis of the Taxonomy, applicants will even be able to select and make use of identified groups of terms ofthe hierarchy (the groups of terms  defining so-called “class scopes”)  that are acceptable for classification purposes and will ensure a comprehensive coverage of the goods or services that would fall within a particular class of the Nice Classification.

MARQUES would not in principle object to the adoption of the Taxonomy for the purpose of harmonising the classification system, to the extent that the groups of terms defining the class scopes under the Taxonomy are intended to meet the requirements of clarity and precision as now referred to in the CJEU’s ruling in the IP Translator case and so far that it is made clear that those groups of terms defining class scopes should only be used if and to the extent that broad protection is really needed, e.g. by those economic operators who actually provide diversified goods or services.

However, as a rule and in the general interest of all users, MARQUES maintains its view that applicants should always specify the goods and services in  a manner as would be required to make it possible to establish which goods or services the application is intended to cover.5Under the above circumstances, MARQUES would encourage all national offices not to adopt any other different approach,  notably any other  approach  that  would  contradict the CJEU’s ruling in the IP Translator case.

In conclusion, we would like to remark that the CJEU’s ruling in the IP Translator case does not address the question of how the scope of protection of already registered trade marks ought to be interpreted, in cases where those trade mark registrations make use of class headings. As this is an entirely different matter, we do not intend to address the same here.