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IP Cases & Commentary – Details

02 May 2013

Interpretation of the IP Translator Judgment

Richard Burton

OHIM and the national EU Offices have published a statement on their websites concerning the interpretation of the IP Translator case on class headings. 

OHIM comments on its website that:

''Following the publication of the IP Translator judgment in June 2012, OHIM and the National IP offices of the EU have been discussing the interpretation of the Nice class headings in various meetings. As a first result of those discussions, the National Offices and OHIM have today published on their respective websites a Common Communication on the interpretation of the IP Translator judgment.

This Communication shows how each Trade Mark Office interprets the scope of protection of their national trade marks and of Community Trade Marks containing all general indications of one or more classes, filed before and after the judgment, with the details displayed using an overview composed of six annexes.

At the same time, OHIM has included this approach in its Manual concerning Opposition, Part 2, Identity and Likelihood of Confusion, Chapter 2: comparison of goods and services.

This change to the Manual has been done following a fast-track procedure, which is an exceptional procedure in order to have the newly adopted practice reflected immediately for our examiners and users. Further revision of the Manual for adoption into Guidelines will follow the complete cycle of consultations rounds.''

The communication is published by the European Trade Mark and Design Network (tmdn), which is an initiative that has been set up in order to reduce the differences in practices between OHIM and national offices.  This communication stems from the related Convergence Programme.  The communication itself states:

''This Judgment has an influence on the practice of all Trade Mark Offices of the European Union and calls for convergence on the interpretation of the general indications of the Nice Class Headings. Without prejudice to the fact that each Office is bound by its national legislation, national court decisions and, in some cases, previous communications, there is a willingness and a need to collaborate with a view to implementing this Judgment in a harmonised manner in order to provide legal certainty both for the competent authorities and the economic operators.

The Trade Mark Offices of the European Union are working together to establish a common understanding of the requirements of clarity and precision in the designation of goods and services and to develop a common set of principles to be applied to their respective classification practices.

The Trade Mark Offices of the European Union are working together to determine which of the general indications of the Nice Class Headings are acceptable for classification, pursuant to the above criteria of clarity and precision. This will result in a harmonised approach on the acceptance for classification of each of them. As soon as this agreement is finalized, it will be communicated accordingly.

The Trade Mark Offices of the European Union have created an overview that provides full transparency on how each Office deals with specific topics relating to the implementation of the Court’s ruling.''

The ‘overview’ is available via the link to the Communication and contains information on the approach of each Office and how it currently interprets the IP Translator ruling.

Further, the communication states:

A first concrete aim is a harmonised list of acceptable goods and services. It will be presented in a visual hierarchical structure, which will allow the user to easily locate descriptions of goods and services that match the desired level of protection. This will be implemented into classification tools such as TMClass.

Whilst the hierarchical structure serves administrative purposes only and does not have any legal consequences the result is a comprehensive and dynamic classification tool that, by containing commonly acceptable terminology, offers more certainty to the user when constructing specifications of goods and services. This will help applicants to comply with the requisites of clarity and precision set forth in the “IP Translator” Judgment.

We await further developments regarding the reaction to this very topical and controversial case with interest. 

Useful links

OHIM Statement - Common Communication on the Implementation of IP Translator

IPO Statement - Communication from the European Trade Mark and Design Network - Case C-307/10 "IP Translator"

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