Class Headings and the IP Translator case

Trade Marks are registered in respect of goods and/or services which fall in one or more of 45 classes established through the Offices of WIPO (the World Intellectual Property Organization) by the Nice Agreement in 1957.  The 10th Addition of the Classification came into force on January 1 2016.

Each class has a heading.  For example, the heading of Class 9 reads:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

The trade mark class database also identifies a long list of specific goods which fall in Class 9, including some which might not obviously fall within the class heading, such as for example, computers and recorded computer programs.

At an early stage in its practice, the European Union Intellectual Property Office (the EUIPO) decided that if an Applicant specified the class heading in its application, the EUIPO would interpret that application as covering all goods or services within the class, irrespective of whether those goods or services were in fact specifically identified in the class heading.

Other national Patent Offices, including the Irish Patents Office, adopted a different approach and allowed Applicants to register trade marks in respect of the class headings but insisted that only those goods or services which were identified would be covered.

In October 2009, The Chartered Institute of Patent Attorneys (CIPA) lodged an application at the UK IPO to register the mark IP TRANSLATOR for the class heading of class 41 which reads as follows: “Education; providing of training; entertainment; sporting and cultural activities”. The IPO Examiner decided to interpret the application in accordance with EUIPO practice and it was refused, for the reason that class 41 includes translation services and the mark was therefore descriptive and lacking distinctive character for those services.  CIPA appealed to the Appointed Person (an alternative appellate tribunal to the UK High Court for trade mark matters), on the basis that its application did not mention translation services and therefore – in line with UK practice hitherto – did not include those services.

Noting the divergence in practice, the Appointed Person referred the following questions to the European Court of Justice (CJEU) in June 2010:

“1. Is it necessary for the various goods or services covered by a trade mark application to be identified with any, and if so what particular, degree of clarity and precision?

2. Is it permissible to use the general words of the class headings of the [Nice Classification] for the purpose of identifying the various goods or services covered by a trade mark application?

3. Is it necessary or permissible for such use of the general words of the Class Headings of [the Nice Classification] to be interpreted in accordance with Communication No 4/03 …?'”

The Court answered the questions as follows:

  1. The goods and services for which the protection of a trade mark is sought must 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.
  2. It is permissible to use the wording of the class headings of the Nice Classification to identify the goods and services for which the protection of a trade mark is sought, provided that such identification is sufficiently clear and precise.
  3. An applicant who uses all the general indications of a particular class heading must specify whether its application is intended to cover all of the goods or services included in the alphabetical list for that class or only some of them.  If the latter, the applicant is required to specify which of the goods or services in that class are intended to be covered.

As a consequence of that decision, the EUIPO and a significant number of national offices have ceased to accept descriptions which have been allowed for many years past.  In addition, the new Regulation (EU) 2015/2424 of the European Parliament and of the Council dated December 16 2015 states that the goods and services in respect of which a trade mark registration is applied for “shall be classified in conformity with the system of classification established by the Nice Agreement of 15 June 1957”.

The Regulation further specifies that the goods and services “shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought”.

The Regulation includes the following additional and extremely important paragraph:

Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at that date of filing.

Proprietors of EU trade marks applied for before 22 June 2012 have until September 24 2016 the right to file a Declaration in accordance with the following:

The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor’s intention.  The Office shall take appropriate measures to amend the Register accordingly.  The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 15, Article 42(2), Article 51(1)(a) and Article 57(2).

It has not been our practice to rely upon the class heading but Associates or clients who may wish to clarify the extent of the protection they enjoy under existing registrations are invited to contact us to see if a Declaration on the lines indicated should be submitted in connection with any of their existing registrations.

Norman MacLachlan

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