On 19 June 2012, the Court of Justice of the European Union ("ECJ") handed down its judgment in the IP Translator case (Case C-307/10) concerning the use of the Nice Classification class headings in trade mark applications. With this preliminary ruling, the ECJ clarified to what extent the goods or services covered by a trade mark application need to be identified in order for that application to be in accordance with Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (the "Trade Mark Directive").
The Nice Classification is a classification of goods and services for the registration of trade marks which was created by the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks. It consists of a list of classes with explanatory notes and an alphabetical list of goods and services indicating into which class the goods and services fall. Use of the Nice Classification is recognised in all EU Member States. However, there are two different approaches within the EU to the use of the Nice Classification class headings in trade mark applications. The first approach – also known as the "class heading covers all" approach - is based on Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market ("OHIM") of 16 June 2003 ("Communication No 4/03", now superseded) and entails that by using the class heading of a certain class, a claim is made to all the goods or services which are part of that class. With the second approach, which is the literal approach, the words used in the class headings are given their natural and usual meaning.
The case before the ECJ pittedthe Chartered Institute of Patent Attorneys ("CIPA") against the Registrar of Trade Marks (the "Registrar"). In 2009, CIPA had filed an application to register the sign "IP TRANSLATOR" as a trade mark in the United Kingdom. In the application, CIPA used the heading of Class 41 of the Nice Classification in order to describe the services covered, which reads as follows: "Education; providing of training; entertainment; sporting and cultural activities". The Registrar, who construed the application in accordance with Communication No 4/03, decided to refuse the application. According to the Registrar, the application covered every service that is part of Class 41 of the Nice Classification, including translation services, and not only the services mentioned by CIPA. Given that the sign "IP TRANSLATOR" is descriptive for translation services, the Registrar concluded that the trade mark was devoid of distinctive character. CIPA decided to appeal the Registrar's decision, which ultimately brought the case before the ECJ.
The ECJ first pointed out that the registration of a trade mark in a public register should result in clear and precise information for the competent authorities and economic operators with regard to the rights of trade mark holders. As a result, the ECJ ruled that the Trade Mark Directive requires goods and services for which trade mark protection is sought to be described with sufficient clarity and precision in the application so as to allow the authorities and economic operators to understand the scope of the protection sought.
Second, the ECJ held that the Trade Mark Directive does not preclude authorities from requiring or allowing the use of the Nice Classification for the identification of goods and services in national trade mark applications. The ECJ added, however, that the requirement of clarity and precision should always be met when identifying the goods and services for which protection is sought in order to ensure the effectiveness of the Trade Mark Directive. Given that the ECJ found that some of the Nice Classification class headings are sufficiently clear and precise as such whereas others are too broad and cover goods or services that are too diverse, it concluded that it will be for the competent authorities to decide, on a case-by-case basis, whether a certain heading is sufficiently clear and precise.
Finally, the ECJ decided on the extent of the protection resulting from the use of the Nice Classification class headings. The ECJ held that, when using the Nice Classification class headings in order to identify the goods or services for which trade mark protection is sought, an applicant for a national trade mark should specify whether the application covers all the goods or services in the alphabetical list of the class concerned or only some of those goods or services. In the latter case, the applicant should identify the goods or services in that class that are intended to be covered.
In view of the ECJ's ruling, OHIM issued Communication No 2/12 of the President of the OHIM of 20 June 2012 ("Communication No 2/12"). With Communication No 2/12, which entered into force on 21 June 2012 and repealed Communication No 4/03, OHIM announced its change in practice when examining Community trade mark applications in order to ensure that its practice is in line with the ECJ's IP Translator judgment.
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