Australia: Trade marks in the EU - what Australian businesses need to know after IP Translator

Australian businesses trading or intending to trade in EU markets should carefully review their trademark protection strategy in light of the recent ruling by the EU's Court of Justice.

The Court of Justice of the European Union (CJ) provided guidance on the scope of trade mark protection in the EU when it handed down its much-anticipated decision in IP Translator on 19 June 2012.

It was expected that the CJ would use the reference to abolish the "class heading covers all" approach to trade mark specifications. These ambit claims across entire classes of goods and services provide extremely broad protection and make it more difficult to clear new brands in EU markets.

Instead, the CJ has allowed for Community Trade Marks (CTM) applicants to continue claiming class heading protection, and has left the matter of interpretation of specific class heading and general indication claims to be decided on a case-by-case basis. Further, following the decision, the CTM Office (OHIM) has announced that it will work with EU national offices towards adopting a common practice on the interpretation of the general indications within class headings.

For Australian business with an interest in EU markets, the decision calls for precision and clarity in the drafting of trade mark specifications, while at the same time allowing for class heading claims for CTMs. This calls for a mixed drafting style, in which it may be prudent to adopt a "class heading plus specific goods/services" approach when filing a CTM (and perhaps also when an initial Australian trade mark application is made, if it is to be the base for an International Registration designating the CTM system).


Trade mark protection essentially revolves around two key factors: the sign for which registration is sought, and the specification of goods and services.

Under the Nice Agreement there are 45 classes into which goods and services are categorised. Each class has a "class heading" which describes the types of goods and services included in that class.

Understandably, class headings can not be exhaustive lists and there are many goods and services covered by trademark applications and registrations that are not identified in a class heading. "Sleeping bags", for example are covered in class 20 of the Nice Agreement but are not mentioned in the heading which reads "furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics".

In the IP Translator application, the particular service in question was "translation services" (classified in class 41). Under the "class headings covers all approach", adopted by the EU's Community Trade Marks Office (OHIM), a specification covering the class heading "education; providing of training; entertainment; sporting and cultural activities" would cover "translation services".

In contrast, the UK and some other national registries favour the "means what it says" approach. Under this framework translation services would not be covered within the class 41 specification as the phrase is not included in the class heading.

The difference is illustrated in the table below:

UK approach OHIM's approach

Class 41 class heading (covering "education; providing of training; entertainment; sporting and cultural activities") "means what it says".

"Translation services" (which fall in class 41) would not be covered by this specification based on the UK approach.

"Class heading covers all" means that the class 41 class heading covers everything that could conceivably fall in class 41.

"Translation services" are covered by "education; providing of training; entertainment; sporting and cultural activities" based on OHIM's approach.

In the IP Translator decision the CJ was asked to rule on the validity of the "class heading covers all" approach, as opposed to a "means what it says" approach. This was a test case brought by the UKIPO, which - using the "class heading covers all" approach adopted by OHIM - raised an objection against a UK trade mark application for IP TRANSLATOR on the basis that the mark was descriptive and lacked distinctiveness for "translation services".

The decision

It was thought the CJ would use the IP translator reference as an opportunity to abolish the "class heading covers all" approach. Among other things, the approach is criticised for providing rights that are too broad and for lacking certainty and transparency.

However, the decision of the CJ has allowed for applicants to continue to claim class headings.

The proviso is a call for precision and clarity in the drafting of trade mark specifications. The Court has called for national authorities to consider, on a case-by-case basis, the scope of claims to general indications within class headings. General indications are claims within a class heading, such as "providing of training" within the class 41 class heading "education; providing of training; entertainment; sporting and cultural activities".

Perhaps as part of a push to promote certainty (though some would disagree), the Court of Justice has opened the door for applicants to indicate whether they wish to claim all goods and services within a particular class at the time of filing a trade mark application.

Following the decision, OHIM immediately released a press statement in which it confirmed that CTM applications filed before 21 June 2012 for class headings will be taken to cover all the goods/services in a particular class unless it is specified that protection is only sought for particular goods and services in that class.

The press statement also declared that applicants must expressly state, in CTM applications filed on or after 21 June 2012, whether or not their intention is to cover all the goods or services in that class. This rebuttable presumption will doubtless be tested in the courts before long.

What does this mean for Australian businesses?

The decision highlights the importance of drafting trade mark specifications with precision and clarity, while also bearing in mind the ability to claim class headings (for example, when filing CTM applications).

For Australian brand owners, if the EU market is of interest or importance to your business, then your existing portfolio in the EU should be reviewed in light of the IP Translator decision, to ensure that the CJ's ruling does not pose any risks. This is equally as important in the context of any existing disputes.

For new filings – and while there are many factors to consider – thought should be given to adopting class headings or the relevant general indications from Nice class headings (together with the specific goods/services of interest) when filing the initial Australian trade mark application, particularly if an applicant is considering using the International Registration system later to extend protection beyond Australia to the EU.

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.

Most awarded firm and Australian deal of the year
Australasian Legal Business Awards
Employer of Choice for Women
Equal Opportunity for Women
in the Workplace (EOWA)

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.