Most Read Contributor in South Africa, September 2016
Europe's highest court recently gave a decision in a trade
mark case that deals with the technical, yet highly important,
issue of trade mark classifications and class headings. Before
discussing the ruling, some background is in order.
A trade mark is registered for particular goods or services,
basically those goods or services for which the trade mark owner
uses or intends to use the mark. Goods and services are
categorised in 45 different classes (34 goods classes, 11 service
classes), in terms of something known as the Nice
Classification. Each class has a heading, and in some cases
that heading gives a pretty good indication of exactly what goods
or services are covered by the class, but in other cases it's
somewhat obscure. In addition, there's an
alphabetical list of goods and services that comprises some
12 000 entries, so if you want to find out what class a particular
product falls into, you simply look it up in the alphabetical list
and you have your answer.
Trade mark authorities generally don't like trade mark
applications that are framed as covering 'all goods in the
class', because they feel that registrations like this are both
unclear and overly broad. Yet, for reasons that don't quite
make sense, they're happy to accept applications for
class headings, even though there's a general acceptance
that if a trade mark is registered for a class heading, it
covers all the goods or services that fall into that class
(certainly the EU trade mark system operates on this
On to the case, whose facts illustrate the issues very nicely.
The UK Chartered institute of Patent Attorneys filed a UK trade
mark application to register the mark IP Translator. The
application was filed in class 41 for the class heading, which
reads: 'Education; providing of training; entertainment;
sporting and cultural activities'. The application was refused
by the UK Trade Marks' Office on the basis that the mark was
non-distinctive, being descriptive of some of the services covered.
Why? Because the alphabetical list shows that translation services
– services that are not in any way suggested by the class
heading - fall into class 41. So, went the
argument, as the application is for the class
heading, translation services are covered, which means that the
mark is descriptive of certain of the services for which protection
The issue that found its way up to Europe's highest court
was therefore very simple: does a trade mark application that's
filed for the class heading in fact cover all the goods or services
that fall into that class. The European court tends to give
judgments that are understated and that require some thought. What
it said here was this: goods and services must be identified with
sufficient clarity and precision to enable authorities and economic
operators to determine from the classification exactly what
protection is sought (fair enough!); it's OK to use class
headings, and in some cases this will be sufficiently clear and
precise, but there will be cases where it's not sufficiently
clear, and it's then up to the trade mark owner (and the trade
marks' office) to make sure that it's clear just what is
and isn't covered.
So what does this mean? Well, if you do file for a
class heading, you will probably need to add words
like ' ...this covering all the goods/services in
the class' at the end of it - the EU trade mark
authorities have already indicated that this will be necessary.
Alternatively, if you don't want everything covered but you do
want to use a class heading, you may need to add a specific
exclusion at the end of it. Either way, greater thought will
need to be given to trade mark classifications in future. Not only
when filing applications in Europe, but also when filing in South
Africa, because decisions of the European court, although not
binding in South Africa, are often followed here.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
As reported in the market updates section of this newsletter, the UAE Ministry of Economy recently reviewed the fees charged by its various departments, including the Trade Mark, Patent and Copyright Office.
Managers responsible for ensuring that an organisation’s intellectual property rights are protected often believe that the organisation automatically owns all intellectual property rights arising from the work of its employees.
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”
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).