The IP TRANSLATOR Case – Use of Class Headings when filing trade marks

The IP Translator case concerned the use of class headings when filing applications to register trade marks.

In 2003, the Community Trade Marks Office decided that an application to register a trade mark in a particular class could cover all of the goods or services in that class by reciting the Nice Classification heading (Communication No. 4/03 of the President of the Office 16 June 2003).

http://oami.europa.eu/en/office/aspects/communications/04-03.htm

The Chartered Institute of Patent Agents (CIPA) filed an application at the UK Intellectual Property Office (IPO) to register the trade mark IP Translator.  The application covered the Nice Classification class heading for class 41, namely “Education; providing of training; entertainment; sporting and cultural activities”.  The application was considered by the IPO to cover all of the services in class 41 including translation services and was objected to on the basis that the trade mark was descriptive of translation services even though those services were not clearly covered by any of the terms used in the class heading.

CIPA argued that translation services were not covered by the specification as filed and appealed.

Ultimately the following questions were referred to the Court of Justice of the European Union (CJEU) for a ruling:

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 CJEU held that –

  • Goods and services for which protection is sought shall be identified with enough clarity and precision to enable the relevant authorities and economic operators to determine the extent of the protection conferred by the trade mark based on the list of goods and services alone.
  • It is possible to use the class headings of the Nice Classification to identify the goods and services for which protection is sought provided such identification is sufficiently clear and precise.
  • If the general indications of a class heading are used to identify the goods and services for which protection of the trade mark is sought, the applicant must specify whether the application is intended to cover all of the goods or services included in the alphabetical list of that class or only some of those goods or services.
  • If the application covers only some of those items the applicant must specify which of the goods or services in that class are to be covered.

How has the Community Trade Marks office reacted?

OHIM has issued Communication No.2/122 of the President of 20/06/2012 (http://oami.europa.eu/ows/rw/resource/documents/CTM/legalReferences/decisionPresident/com_2_12.pdf) which indicates that –

  • The office will continue to accept class headings on a case by case basis.
  • The Acceptable terms will be specified in guidelines issued by the office.
  • The Applicant will have to specify if the application is to cover all of the goods or services included in the alphabetical list of the class.

Subsequently, various National Offices along with the OHIM are working within the Convergence Programme (referred to in Communication 2/12) to reach agreement on which general indications within the Class headings are acceptable and which are not.

What about the Irish Patents Office?

The Irish Patents Office, based on the fact that certain of the general indications will not be sufficient to provide the precision and clarity necessary to enable competent authorities and economic operators to be clear on the extent of the protection being sought, also produced a list of those general indications in the class headings which will not be acceptable and which will be acceptable.

The Irish Patents Office has also produced comprehensive guidelines as to what might or not be acceptable to the Office and these are available on request.

The basic idea behind the Irish Patents Office guidelines is that that when specifying the list of goods and services to be covered by a trade mark application there must be sufficient clarity such that the extend of the protection being sought or obtained will be clear to the Irish Patents Office and to third parties.

The Irish Patents Office will not accept a simple statement that the class heading is intended to include all of the items included in the alphabetical list.  Rather the Irish patents Office will insist that the need to be clear and precise in the stating of the goods and services.

For further information please contact Peter MacLachlan by email at mail@maclachlan.ie

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