Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, 19 June 2012

A recent ECJ ruling concerning use of Nice Classification class headings in specifications of goods and services in trade mark applications means that applicants for trade marks should 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 a particular class, this must be stated specifically in the application.

IP Translator decision

The Chartered Institute of Patent Attorneys ("CIPA") applied to register the word mark IP TRANSLATOR as a UK national trade mark for "education; providing of training; entertainment; sporting and cultural activities" in class 41 of the Nice Classification.

The application was refused; the Registrar interpreted the application in accordance with OHIM's Communication 4/03 and concluded that it covered not only services of the kind specified by CIPA but also every other service falling within class 41, including translation services. For such services, the designation IP TRANSLATOR lacked distinctive character and was descriptive in nature. Since there was no evidence that the word sign had acquired distinctive character through use in relation to translation services prior to the date of application, the sign could not be registered.

CIPA appealed to the Appointed Person, contending that its application did not specify, and therefore did not cover, translation services in class 41, and for that reason, the Registrar's objections to registration were misconceived and CIPA's application for registration had been wrongly refused.

The Appointed Person decided to stay the proceedings and refer questions to the Court of Justice of the European Union ("CJEU") for a preliminary ruling:

'In the context of [Directive 2008/95, the Trade Marks Directive] ...:

  • 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?
  • 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 ...?'

The CJEU has now ruled that:

  • [Directive 2008/95] must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to 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;
  • Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;
  • an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. 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.

In summary, therefore, goods and services included in a trade mark application must be listed precisely and clearly enough to enable extent or scope of the trade mark rights to be determined; the general indications of the Nice Classification class headings may be used so long as this way of identifying the goods and services is sufficiently clear and precise; and when using all the general indications of a particular class, the applicant must also specify whether it intends to cover all the goods or services included in the alphabetical list of that class, or only some of them (in which event the applicant should say which ones).

What is meant by "clear and precise"? Unfortunately, the CJEU does not provide additional guidance and instead refers to the requirements laid down in the Directive. It is for competent authorities (in this particular case the Registrar of Trade Marks and the UK Intellectual Property Office) to make an assessment on a case by case basis as to whether the class headings are themselves sufficiently clear and concise to allow authorities to determine scope of protection conferred by the trade mark.

As a result of this ruling, OHIM has issued a new communication (Communication 2/12 which replaces Communication 4/03) from 21 June 2012. In relation to any Community trade mark applications made before 21 June 2012, OHIM will assume that the applicant intended to cover all goods or services included in the alphabetical list of the relevant class. Registrations prior to 21 June 2012 will be deemed to cover all goods or services included in the alphabetical list of that class "in the edition in force at the time when the filing was made."

It is not clear how the various national trade mark authorities and courts (and indeed OHIM) will construe the alphabetical list requirement – for example in cases where particular goods or services are not in this list but are accepted terms in the Euroclass database. However as a practical matter, where a trade mark application is intended to cover all of the goods and services in the alphabetical list of the particular class, this must be stated specifically in the application – but even then, it will only cover those goods and services in the alphabetical list in force at the time of the application, so a reasonably regular review of the precise extent of the coverage of any specification would be sensible, especially for fast changing technologies (and who had heard of sales on the internet 15 years ago?!).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.