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IP Cases & Commentary – Details

20 June 2012

IP Translator - Court of Justice Judgment

Ian Starr

The much anticipated CJEU judgment in the IP Translator case has just been given (see link below). As with many CJEU judgments the actual consequences of its judgment have been sent back for the referring Court (in this case the Appointed Person in the UK) to determine.

Nevertheless, there are a number of key points that have been given:

  1. All trade mark applications must specify “with sufficient clarity and precision” what goods or services are sought to be protected.
  2. Using Class headings (taken from the Nice Classification) may be sufficient in the case of certain classes but not in the case of others. No indications are given of which Class headings are sufficiently clear and which are not. No doubt OHIM (and the national registries) will have to form a view on this.
  3. The Class headings that are likely to fall foul of this lack of clarity problem are those where particular goods or services falling within the Class do not naturally fall within a common understanding of the words used in the heading itself (i.e. are “translation services” commonly understood as “education services”?)
  4. One issue the Court was clear on was that when using Class headings the applicant must specify if they are using the heading to encompass all the goods or services in the Class (i.e. current OHIM approach) or whether they are only seeking protection for the goods or services specifically mentioned in the heading.

This decision will likely require a change of practice going forward both at OHIM and nationally and we will be monitoring this closely and issuing advice at the appropriate time. Whether the decision might have any retroactive effect on existing registrations based solely on Class headings is not dealt with and that may well be a future battleground. 

Useful links

CJEU judgment at http://curia.europa.eu

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