26 June 2012

Class Headings Decision C 307/10 Issued by CJEU (UPDATE: Interpretations of OHIM and MARQUES)

On our coporate ksnh::law blog, we recently reported on the much anticipated 'IP TRANSLATOR' decision (C 107/10) of the Court of Justice of the European Community as released on 19 June 2012.

As I give a brief summary on the base below, please refer to the posting titled "CJEU ‘Class Headings’ Case C-307/10 ‘IP TRANSLATOR’ – Final Judgement Is Out" for a more complete coverage of the decision.

The trademark application was launched as a test case by the Institute of British Patent Attorneys (CIPA) to have OHIM's  practise as to the meaning of class headings reviewed 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 ClassificationThe 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 undefalls Class 41. The susequent appeal to the referring court raised that the application did not specify, and therefore did not cover, translation services. 

The issued decision is quite clear on this problem. Therein, it has been clarified

  • 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 genereal 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 (no. 62). In this case, the applicant would have to specifiy the goods and services further.
Thus, the court clearly voted for the means-what-it says approach.

From this decision the following three issues arise:
  1. Pending applications reciting class headings which are not clear and preciseHere the court stated that the applicant must be given the chance to specify the goods and services further, which means to extend the scope beyond the plain meaning of the general indications of the class heading.
  2. Registrations reciting class headings which are not clear and preciseHere the court did not give any indication how this problem can be resolved. Personally, I would assume that means-what-it-says would prevail in the case of a conflict or cancellation actions. But this remains the most relevant issue. How to deal with the past. This is a point currently dealt with in the Class Headings Project of the Convergence Programme.
  3. General indications which are not clear and preciseThis refers to what the Advocate General raised in his Opinion of 29 November 2011. Some of the general indications (e.g in classes 37 and 45) would be much too general and cover goods and services which are much too varied to be compatible with the function of a trade mark, which is to serve as an indication of origin (see no. 84 of the Opinion). Thus, in the Taxonomy currently being set up in the Convergence Programme, it must be taken care that all groups of terms defining a class scope are sufficiently clear and precise to fullfill this function. Note, however, that all these terms currently proposed have been confiremd to be accepted by all national offices as well as OHIM and WIPO for classification pruposes.
UPDATE (05.07.2012): Today we report on OHIM's conclusions drawn from that decision (see this announcement and the new Communication Nº 2/12) according to which a trademark applicant using the general indications of a particular class heading of the Nice Classification in order to obtain protection for all goods/services covered by that class only needs to make an appropriate statement like this:
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 critisised by the brand user's association MARQUES in an open letter sent to all IP offices in the European Union, including OHIM, as it would require the applicant to additionally study the Nice classification's alphabetical list (pdf) of goods/services of that particular class before he is able to exactly determine the goods and services covered by the trademark, whereas the CJEU clearly demanded the opposite:
Directive 2008/95 [...] requires [that] 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.