On 19 June 2012 the Court of Justice of the European Union (CJEU) handed down its judgment in case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks. The judgment has cast doubt on the practice of OHIM and certain national trade mark registries with regard to the interpretation of the specification of goods and services in trade mark registrations.
This judgment concerns the application of the Nice Classification system in the context of the European Directive to approximate the laws of Member States relating to trade marks (2008/95/EC) (the "Directive"). The Nice Classification system is an internationally recognised system of classification of goods and services for use in the registration of trade marks. The system consists of 34 classes of goods and 11 classes of services. The content of each class is described on a general level by class headings. For example, the class heading for class 41 is "Education; providing of training; entertainment; sporting and cultural activities.". In addition to these class headings there is a list of more specific goods and services which belong to each particular class. In respect of class 41 the more specific services include, for example "boarding schools" and "circuses", and also services which do not necessarily fall within the natural meaning of the class heading, such as "translation services".
The specification of a registered trade mark defines its scope of protection; the interpretation of the specification is therefore relevant both to the question of whether a trade mark is valid (in particular establishing whether a mark is distinctive or descriptive in relation to the relevant goods and services) and whether it is infringed. Interpretation of trade mark specifications is important when determining the scope of a registration in the context of trade mark clearance searches.
OHIM is the registration office for Community Trade Marks ("CTMs"). Communication 4/03 of the President of OHIM states that, when defining the scope of a trade mark's specification:
(1) OHIM does not object to the use of any of the class headings as being too vague and indefinite;
(2) The use of all the general indications in the class headings of a particular class constitutes a claim to all the goods or services in that class; and
(3) The use of one of the general indications in the class heading covers all of the individual goods or services falling within that classification.
It is apparent from a survey by The Marques Association in February 2008 of the practice of national trade mark registries in the European Union, that a number of national trade mark registries follow the guidance set out above, which can be described as "class heading covers all". However, a number of offices do not do so.
The UK and the Benelux Intellectual Property Offices, for example, use a more literal interpretation of the specification of goods and services. The interpretation of a specification of goods or services may only be made by reference to the goods or services specifically included in that statement. In other words, the specification "means what it says".
The "class heading covers all" approach was followed by the OHIM and by the following National Offices: Bulgaria, Finland, Greece, Hungary, Italy, Lithuania and Romania.
There has therefore been a divergence in practice between national trade mark registries in Europe, and between certain national registries and OHIM.
In this action, the UK Chartered Institute of Patent Attorneys ("CIPA") applied to register a UK trade mark for the word mark IP TRANSLATOR for "Education; providing of training; entertainment; sporting and cultural activities". This constitutes all of the general indications of the class heading of class 41 of the Nice Classification. The Registrar interpreted this specification in line with communication 4/03 above and therefore found that it covered all services within class 41, including translation services. This application was therefore rejected on the basis that the word mark IP TRANSLATOR was descriptive and non distinctive in respect for translation services.
CIPA appealed to the Appointed Person and contended that (following the previous UK practice) its registration did not specify, and therefore did not cover, translation services in class 41. Noting the divergence in practice the Appointed Person made the following reference to the CJEU in the context of Directive:
"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?
3. 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 ...?'"
The CJEU's Decision
The Court ruled as follows:
(1) The goods and services for which the protection of a trade mark is sought must 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.
(2) It is permissible to use the general words of the class headings of the Nice Classification for the purpose of identifying the goods and services covered by a trade mark application, provided that such identification is sufficiently clear and precise. The court found (without giving examples) that some such general indications are, in themselves, sufficiently clear and precise; however others are not where they are too general and cover goods or services which are too variable.
(3) Where an applicant uses all the general indications of a particular class (such as in the application for IP TRANSLATOR), the application must specify whether it is intended to cover all of the goods or services included in that class. If the application concerns only some of those goods or services, the applicant is required to specify those goods or services.
It is therefore for the Appointed Person to determine whether CIPA specified in its application whether or not it intended to cover all of the services in class 41, and in particular, whether or not the application was intended to cover translation services.
The Effects of the Decision
In response to the judgement of the CJEU, the President of OHIM issued Communication No 2/12 on June 20 2012 which repeals the previous and much debated Communication No 4/03. OHIM inter alia confirms that –in line with the judgement of the CJEU- it will continue to accept the use of the general indications of the class headings on a case-by-case basis and announces that it will update its filing system to provide a user-friendly solution when using class headings to claim protection for all of the goods or services in the alphabetical list of the Nice Classification.
With respect to existing Community trade marks registered prior to the entry into force of Communication No 2/12 and which use all the general indications listed in the class heading of a particular class, OHIM states that it considers that it was the applicant’s intention to cover all the goods and services included in the alphabetical list of that class in the edition in force at the time when the trade mark application was filed. It thus appears as though OHIM has chosen a rather easy way out –possibly for administrative reasons- and it remains to be seen how the national courts in Europe will interpret the scope of protection of such Community trade marks in view of the judgement of the CJEU in for example infringement proceedings.
Despite OHIM’s statement that in order to ensure legal certainty in the case of Community trade marks filed for the entire class heading, the Registry will reflect whether or not all goods and services in the alphabetical list are covered, Communication No 2/12 poses a practical challenge for trade mark holders and third parties who are interested in the actual scope of protection of an (existing) Community trade mark registered for the class headings. For, in order to accurately determine the scope of protection of such Community trade mark, one must first assess which of the ten editions of the alphabetical list of the Nice Classification is applicable and subsequently review this list, instead of being able to consult the current edition in force. In order to simplify this particular issue, OHIM could consider adding an online tool to its website which will enable interested parties to determine which particular edition applies to a certain Community trade mark registration.
Moreover, the term “alphabetical list” as used in both the judgment of the CJEU as well as Communication 2/12 appears to comprise less goods and services as included in for example OHIM’s online classification tool Euroclass. It thus remains to be seen how (strictly) OHIM and the various national courts in Europe will adhere to the “alphabetical list” for example in cases where a particular term is not included in this list but is part of the accepted terms as compiled in the Euroclass database.
As a practical matter applicants for trade marks must now ensure that where an application for a trade mark is intended to cover all of the goods and services included in the alphabetical list of the particular class, this must be stated specifically in the application. At the time of writing there is debate as to how this could adequately be achieved.
Future Developments – the Italian Perspective
As far as Italy is concerned, for the time being the CJEU judgement should not lead to major consequences. The Italian Patent and Trade mark Office (Ufficio Italiano Brevetti e Marchi) was among the EU Countries following the “class heading covers all” approach.
Italy and its representatives, however, are fully involved in the process of reviewing structures and class scopes of the Nice Classification as part of the OHIM Convergence Programme’s harmonisation of trade mark classification of goods and services project. This is aimed at creating a clearer and more precise harmonized itemisation (“taxonomy”) of goods and services for the purposes of trade mark registration. In this process, Italian representatives are working together with the representatives of the EU Countries and OHIM in the Convergence of Class Headings working group.
In particular, all the Offices are involved in developing a common set of comprehensive terms covering all goods or services in a given class at a given time.
During a meeting in Alicante about said Convergence Program, the OHIM and the national trade mark offices in Europe stated that in the near future there will be a single communication with an overview of how each Office interprets the trade marks filed in the past which cover class headings. The communication will also include a clear message on the common moving forward about the Principles of New Common Practice.
We will see the outcome of this project in what we expect to be the very close future.