South Africa: IP Translator

Last Updated: 6 August 2012
Article by Rowen Forster

Most Read Contributor in South Africa, September 2018

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 assumption).

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 is required.

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.

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