EU test case clarifies class headings

December 10 2012

Case of the Year: CIPA v UK government

The result

Trade mark applicants must be specific when using class headings

The impact

OHIM classification practice overhauled, but questions remain

How much protection does a Community trade mark provide? Sixteen years after they were introduced, and despite more than 1 million applications, there is still doubt as to the answer.

One reason for this was OHIM's approach to applications that listed all the general indications in a class heading in the application, rather than identifying particular goods or services. Such applications should be treated as claiming all the goods and services in the class, said OHIM. But most national offices in Europe disagreed, applying the rule that the general indications only cover their plain meaning.

Trade mark applicants were left confused. OHIM's approach gave rights owners more protection in principle, but also led to legal uncertainty. In a bid to clear up the chaos, the UK's Chartered Institute of Patent Attorneys (CIPA) launched a test case before the UK IPO, applying for the mark IP Translator in class 41, listing the general indications: the application was rejected as descriptive as class 41 covers translation services.

That led to three questions being submitted to the Court of Justice of the EU, the Grand Chamber of which gave its ruling in the case on June 19. Largely rejecting OHIM's class-heading-covers-all approach, it said that applicants must identify the goods and services "with sufficient clarity and precision". If the general indications of a class heading are used, said the Court, the applicant must specify whether the application is intended to cover all the goods and services in the alphabetical list of the class, or only some.

In a sign of how seriously it viewed the decision, OHIM published lengthy new guidelines just a day later, saying that if applicants want to claim all goods or services in the alphabetical list for a particular class, they can do so by ticking a declaration on the filing form. It also set out how historic applications would be treated.

But, despite the deep thinking that had clearly gone into this carefully balanced new policy, it was immediately criticised by some trade mark owners. On July 4, for example, MARQUES wrote a letter arguing that OHIM's new approach did not provide the required clarity and precision, and meant that third parties would have to refer to old versions of the Nice Classification to understand the scope of registrations.

That suggests that a full answer to this complex question remains elusive – but there is hope. OHIM has launched five projects with European national offices in its so-called Convergence Programme, and two of these concern classification and class headings. The work, which continues, involves the creation of a harmonised database of classification terms, presented as a taxonomy. If, as is likely, they are adopted by most EU national offices, as well as OHIM and WIPO, the projects will go a long way to finally giving us a harmonised approach to trade mark class headings in Europe.

Case details Designs

CIPA v UK government

Trade mark: IP Translator (Class 41)

Office: UK IPO

Trade mark number: 2528977

Applicant: Chartered Institute of Patent Attorneys (CIPA)

Court: Court of Justice of the EU

Case number: C-307/10

For CIPA: Michael Edenborough QC

For the UK government: Simon Malynicz

This case was selected as one of Managing IP’s Cases of the Year for 2012.

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