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IP Cases & Commentary – Details

29 November 2011

IP Translator - Advocate General's Opinion

Ian Starr

In his opinion issued on 29 November 2011, the Advocate General of the Court of Justice of the European Union (CJEU) has come down firmly in favour of trade mark specifications listing specific goods and services rather than merely relying on class headings. He considers this should apply to both Community and national trade marks.

OHIM’s current practice (as set out in its Communication No. 4/03) is criticised as not giving economic operators (eg, competitors) sufficient clarity as to what a CTM protects, and effectively giving a CTM owner almost unlimited exclusive rights over a particular class. He considers this is contrary to the essential function of a trade mark (ie, as an indication of origin) and to the need for such protection to be identified accurately.

The Advocate General recognises that some class headings in the Nice classification (eg, 'soaps' or 'cutlery') are sufficiently precise, but many are not – particularly in the services classes. Whilst not preventing the use of sufficiently precise class headings in appropriate cases, he makes it clear that specifications of goods and services must be “clear and precise so that the goods and services may be identified accurately by the competent authorities and economic operators”.

This is very much in line with UK practice and, whilst it does not mean that specifications have to be drafted to the nth degree, it does mean that some thought must be given to their drafting in future. The opinion does not deal with what will happen to those CTMs with 'class heading only' specifications and, if the CJEU agrees with the opinion, OHIM may need not only to revisit Communication 4/03 but also to allow owners of such CTMs to amend those specifications.

Update 30 November 2011

Quoted in Intellectual Property Magazine, 30 November 2011, D Young & Co partner Jeremy Pennant said, "Assuming the CJEU follows the AG's opinion, this will have a significant impact on the way in which specifications are interpreted. It also raises a potential practical difficulty for OHIM with existing CTM registrations where class headings have been claimed. The opinion is in line with UK practice and from a US standpoint also makes sense. The court's judgment will be keenly awaited." The full article can be viewed at the IP Magazine website: www.intellectualpropertymagazine.com

Useful links

Full text of Advocate General's Opinion C-307/10

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