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LITERAL APPROACH TRIUMPHS IN LONG AWAITED IP TRANSLATOR CASE

2013-05-17

On 19 June 2012, the Court of Justice of the European Union delivered its decision in The Chartered Institute of Patent Attorneys (“CIPA”) v Register of Trade Marks (Case C-307/10).BACKGROUND:On 16 October 2009, CIPA applied for a UK trade mark application for the mark IP TRANSLATOR in Class 41 using the class heading: “Education; providing of training; entertainment; sporting and cultural activities". The UK-IPO subsequently refused the application citing Sections 3(1)(b) & (c) of the Trade Mark Act 1994. The reasoning for the refusal was that the UK-IPO assumed that as CIPA had included the class heading in the specification, it intended the application to cover all services that fall into Class 41.  Accordingly, this would include “translation services” and as such, the UK-IPO deemed the mark to lack the requisite inherent distinctiveness and was deemed descriptive of the services.  Further, evidence was not submitted to show that the mark had acquired distinctive character through the use made of it.  There was also no request by CIPA for “translation services” to be excluded from the specification.CIPA appealed the decision to the Appointed Person, claiming that its application did not purport to cover “translation services” and therefore the objection had been raised incorrectly.  The Appointed Person stayed the proceedings and referred the following three questions to the Court of Justice of the European Union (“CJEU”) and asked for a preliminary 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?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.

DECISION:

·         The applicant must set out the goods and services for which protection of the trade mark is sought to be identified 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.

·         The use of class headings from the Nice Classification system may be sufficient in the case of some classes of goods and services, provided that the identification is sufficiently clear and precise.  However, no indication was given of what classes were being referred to here.

·         An applicant must clearly set out when using a class heading whether they intend the application for registration to simply cover the listed terms or in fact all of the terms that fall within that class.  No guidance on how this is to work in practice was given; however, this will presumably be a matter for the national courts to decide.  Care needs to be taken to ensure a consistent approach is applied throughout the EU.

CHANGES TO THE OHIM’S PRACTICE:

The OHIM were very quick to respond to the decision by issuing Communication No 2/12 concerning the use of class headings in lists of goods and services and its interpretation of the ruling.  This can be summarised as follows:

As of 21 June 2012, if an applicant wishes to include all listed terms that fall into a class, the class heading may still be used to cover these terms, provided that the application includes the following declaration:

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 filed.”

If the declaration is not attached to the application form at the time of filing, the OHIM will assume that the applicant only wishes to claim protection for the literal terms included in the class heading.  Alternatively, the applicant may also list all of the terms of interest that fall under the class.

Applications filed before 21 June 2012 or marks which proceeded to registration before that date that include the class heading, will be interpreted as including all of the goods or services that fall into that class unless the applicant indicates otherwise.

IN PRACTICE:

The CJEU’s ruling does provide some form of clarification as to the interpretation of the use of class headings. However, it is difficult to see how this will be harmonised across the EU, particularly given that national courts are free to decide how to implement the ruling.

It will be interesting to see what approach the UK-IPO adopts when it issues its practice note.

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