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IP Cases & Commentary – Details

14 March 2013

Case overview: OHIM and EU Member State Offices Publish a Common Communication on the Interpretation of the IP Translator Judgment

Jeremy Pennant

The IP TRANSLATOR case concerns the scope of specifications, how to word them and what is and what is not protected by class headings.

Key issues

CIPA applied in the UK for the mark IP TRANSLATOR for the class 41 heading “education; providing of training; entertainment; sporting and cultural activities”. Specification didn’t cover “translation servicesper se

  • Question arose as to whether the mark was descriptive of translation services, which fall in Class 41. 

The OHIM position BEFORE the ruling

OHIM’s practice was to interpret “class heading wording” as meaning “everything in the class”. This was frequently used by applicants to achieve broad CTM protection. 

OHIM’s position NOW

From June 2012 onwards, class heading wording can be interpreted as meaning all goods or services in the Nice classification Alphabetical list for the relevant class. 

Most of the Alphabetical lists are very long! 

Longest (class 9) contains around 850 items. 

Extensive, but not necessarily exhaustive.

Now required to take a more literal approach, claiming a class heading will not therefore guarantee a claim to all goods/services in that class. 

Recommended to individually list all relevant items from the alphabetical lists and, if required, add any additional “non-standard” goods or services. 

Applications made at OHIM prior to the IP TRANSLATOR judgment and featuring the class headings still interpreted by OHIM as being a claim for all of goods/services in the corresponding class. 

Example

  • CTM filed on 19 June 2012 for only “musical instruments” will be held by OHIM to cover “music stands”. 
  • CTM filed only two days later on 21 June 2012 also for only “musical instruments” will be held by OHIM not to cover “music stands”. 

Best advice (at least for now!)

Draft a bespoke specification so as to represent the business activities as accurately as possible. 

UK Position 

As part of the OHIM Convergence Programme, national offices are working together with OHIM to agree which class headings fall into the category of “clear and precise” terms. 

In the UK (and other Offices such as in Germany), a specification must be interpreted literally. “Music stands” would not be within a specification reading only “musical instruments” if decided by a UK court or the UK Office. 

Additional points to note

Applicants often seek to CTM protection for the broadest scope possible because: 

  • No “prior use” or “intent to use” requirements. 
  • CTMs cannot be challenged for non-use until five years after registration. 
  • However, broad applications can attract unnecessary oppositions. 

There is a requirement in the Trade Marks Directive for clarity and precision in the language of all specifications

Some of the Nice class headings are “in themselves” sufficiently precise and clear as to allow the competent authorities (Offices and the courts]) to determine their scope and protection. The obvious example of a class heading which should qualify as sufficiently clear and precise as to cover the whole of the class is “articles of clothing; footwear; headgear” for class 25. 

Other class headings however do not meet the “sufficiently precise and clear” requirement where they are too general and cover goods and services which are too variable. The Court did not say which class headings were clear and which were not. 

Beware OHIMs current procedure where class headings are still used! If an applicant confirms that their intention is to cover all of the goods / services then OHIM automatically insert the full alphabetical list.

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