Currently viewing the tag: "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.

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