Managing IP’s guide to the IP Translator case
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Managing IP’s guide to the IP Translator case

Officials from OHIM and national IP offices are heading to Luxembourg to urge 13 judges from Europe’s highest court to rule in their favour in a case relating to class headings. Managing IP explains the dispute

Two years ago the body that represents patent attorneys in the UK (CIPA) applied to register IP Translator as a trade mark in class 41 of the Nice Classification (“Education; providing of training; entertainment; sporting and cultural activities”).

Although Class 41 includes translation services, the wording of the class heading does not. The UK IP Office ruled that because the mark is descriptive of goods and services within the scope of Class 41, it had to reject the application on absolute grounds. After a failed appeal, the case is now before the Court of Justice of the European Union (CJ).

So why is the Court of Justice considering the issue?

In May 2010, the UK IPO asked the CJ to decide how European trade mark law should be applied and resolve a conflict between the approaches followed by OHIM and a number of national IP offices on the one hand, and Europe’s remaining national offices on the other.

At a glance


Trade mark(s)

IP Translator

Trade mark office/number

UKIPO - 2528977

TM owner/applicant

Chartered Institute

of Patent Attorneys

Other party/ies involved

UKIPO

Court/judge(s)

Court of Justice of the EU

Jurisdiction

EU

Decision

Pending

Key terms

Class headings,

Goods and services

Case reference

C-307/10

What’s the problem?


The problem focuses on the way in which IP offices grant trade mark rights under the 45 class headings within WIPO’s international classification system.

There are two ways in which officials can approach these headings. In the first, dubbed the “class-headings-cover-what-it-says” approach, trade mark examiners consider 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 in class headings are protected.

In the second, called “class-heading-covers-all”, officials construe the class heading list as if it includes all the goods and services in that class.

What difference does it make?

If a brand owner registers a trade mark in a particular class, he can prevent someone else from using the identical mark on goods that are listed within that class. If the mark is used on a product not listed in that class, he can only claim that the mark is similar – if he can produce enough evidence.

All trade mark classes under the Nice system include extra goods and services that are not in their class heading wordings. IP offices that adopt a class-headings-cover-what-it-says approach say that these products cannot infringe as identical goods, and can only infringe as similar goods, provided that the aggrieved brand owner can show evidence of a likelihood of confusion.

In contrast, under the class-heading-covers-all approach, these extra products infringe as identical goods. The owner of a registered mark enjoys a higher level of protection because an alleged infringer has no defence.

Are there any good examples?

Richard Ashmead, one of CIPA’s advisers on the case, says that under the class-heading-covers-all approach, repair outfits for inner tubes in class 12 would infringe as identical a registration for “Vehicles; apparatus for locomotion by land, air or water” (the class 12 heading). Similarly, a stand for a musical instrument in class 15 would infringe as identical a registration for “Musical instruments” (the class 15 heading).

Under the class-headings-cover-what-it-says approach, neither of these products would infringe as identical trade marks. Instead, a trade mark owner would only be able to claim infringement as similar goods if he were able to produce evidence to that effect.

Which offices adopt each approach?

In 2008 trade mark owners’ association Marques surveyed IP offices in the EU. It found that more than half of national offices interpret class heading specifications to “mean what they say”. These include Benelux, France, Germany, Spain and, until the IP Translator case, the UK.

OHIM, along with the IP offices including Hungary, Italy and Finland, has adopted the class-heading-covers-all approach. OHIM made its position clear in a presidential communication in 2003.

How does the IP Translator case fit in?

The dispute demonstrates how tensions between the different approaches have practical implications for trade mark owners and users.

The applicant applied to register a mark under the class 41 heading. Class 41 includes translation services but the wording of the class heading itself does not. Given that the mark is descriptive of services covered by the class, the UK IP Office objected on absolute grounds in what Ashmead says was a class-heading-covers-all approach.

The IPO considered European decisions in Sieckmann and Dieselit but recognised that following Sieckmann would give CIPA a UK registration for the full claimed list of services, even though it would have been refused as a Community trade mark under OHIM’s presidential communication. However, a UK trade mark could have been used to claim priority as a valid national mark before OHIM. The UK Hearing Officer decided to object to the mark on absolute grounds and ultimately the Office sought advice from the CJ.

What is the Court being asked to decide in the IP Translator case?

The Grand Chamber of the Court of Justice has been asked to rule on three questions:

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 International Classification of Goods and Services established under the Nice Agreement of 15 June 1957 for the purpose of identifying the various goods or services covered by the trade mark application?

3. Is it necessary or permissible for such use of the general words of the class headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication no 4/03 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003?

What do trade mark owners want?

Unsurprisingly, a top priority is consistency and predictability. But in comments made by Marques’ Amicus Curiae committee on the IP Translator case, the organisation said that if the CJ backs OHIM’s approach, it will introduce “severe uncertainties to both brand owners and the general public” and make the clearance of new brands more difficult and costly.

“The registers are already crowded by marks registered with class heading specifications. Applying the approach of Presidential Communication 4/03, such registrations are given broad protection even if they have no reputation and, indeed, may not even have been used. This artificially impedes the clearance of new brands and blocks market innovation,” it said.

Ecta, which represents trade mark owners in Europe,says: “[T]he usage of the approach “class-heading-covers- all” as it was confirmed by the Communication no 4/03 cannot be qualified as being “clear, precise and self-contained” contrary to the requirement confirmed by the CJ case law. Therefore such a use is not necessary and not permissible.”

What happens if the Court says OHIM’s approach is wrong?

Ashmead says that if the Court supports OHIM’s class-headings-cover-all approach, then those trade mark owners who registered their rights with offices in Benelux, the UK, France and Germany may find them with a greater scope of goods than they expected.

If the Court backs the “class-headings-means-what-it-says” approach, then those IP owners with CTMs and registrations in countries such as Finland could consider themselves deprived of rights they expected to obtain.

If this happens, Ecta suggests that trade mark offices implement a transitional period in which trade mark owners have the opportunity to amend their specification to clarify the scope of the rights. “Although they may incur some costs in doing this, it would still be cheaper and more advantageous for them to amend than to re-file,” it says.

Managing IP will be reporting from the hearings this week.

more from across site and ros bottom lb

More from across our site

Data from Managing IP+’s Talent Tracker shows US firms making major swoops for IP teams, while South Korea has also been a buoyant market
The finalists for the 13th annual awards have been announced
Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Loes van den Winkel, attorney at Arnold & Siedsma, explains why clients' enthusiasm is contagious and why her job does not mean managing fashion models
Allen & Gledhill partner Jia Yi Toh shares her experience of representing the winning team in the first-ever case filed under Singapore’s new fast-track IP dispute resolution system
In-house lawyers reveal how they balance cost, quality, and other criteria to get the most from their relationships with external counsel
Dario Pietrantonio of Robic discusses growth opportunities for the firm and shares insights from his journey to managing director
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
Gift this article