So said the Grand Chamber of the Court of Justice of the EU (CJEU) in its decision today in the IP Translator case, referred from the UK.
The ruling was eagerly awaited as European offices have until now adopted two contradictory approaches to interpreting applications that use all the indications in a particular class heading in the Nice Classification.
The class-headings-means-what-they-say approach, followed by examiners in the Benelux, France, Germany and Spain, considers that only goods and services listed in class headings as well as what can be considered as included under those class headings under the dictionary meaning of the words used are protected.
The alternative approach, called class-heading-covers-all, is set out in an OHIM presidential communication and is also followed by Hungary, Italy and Finland. This approach construes the class heading list as if it includes all the goods and services in that class.
In today’s judgment, the Court said that the EU Trade Marks Directive does not preclude the use of the general indications of the class headings “provided that such identification is sufficiently clear and precise”.
It added that if an applicant uses all the general indications of a particular class heading, he or she must specify whether the application is intended to cover all the goods or services listed alphabetically in that class, or only some of them.
“If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered,” said the Court.
In the 65-paragraph ruling, the Court said examiners must assess whether the indications meet the clarity and precision requirements “on a case-by-case basis”.
In the IP Translator case, in October 2009 CIPA applied for the mark IP Translator using the general terms of the heading of class 41 of the Nice Classification: “Education; providing of training; entertainment; sporting and cultural activities.” The application was rejected as the registrar said it covered every service falling under class 41, including translation services, and was therefore descriptive.
CIPA appealed the decision in February 2010 saying that its application did not specify, and therefore did not cover, translation services.
The CJEU said it was for the referring court to decide whether the application covered all the services in that class and in particular whether or not it was intended to cover translation services.
OHIM is expected to respond to the decision and if necessary adapt its practice within the next day.
Managing IP will bring further reports and reaction soon.
Managing IP has also published a background note on the case.
