IP Translator: CIPA Seeks Clarity on Class Headings

In 2003, OHIM had issued a Communication (No 4/03) confirming that applicants could use class headings when filing trade mark applications and that “the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.” It was acknowledged that this was not a practice that is accepted by all national offices.

This case began with The Chartered Institute of Patent Attorneys (CIPA) filing a UK trade mark application to register IP TRANSLATOR in class 41, using the class heading, “education; providing of training; entertainment; sporting and cultural activities”.

The UK Office refused the application on the basis that the mark was non-distinctive for translation services; translation services were considered to have been covered by the application because the class heading had been used. CIPA appealed to the Appointed Person who referred three questions to the Court of Justice.

Question 1: “Is it necessary for the various goods or services covered by a trade mark application to be identified with any, and if so what particular, degree of clarity and precision?”

“Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.”

Question 2: “Is it permissible to use the general words of the class headings of the [Nice Classification] for the purpose of identifying the various goods or services covered by a trade mark application?”

“Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.”

Question 3: ”Is it necessary or permissible for such use of the general words of the Class Headings of [the Nice Classification] to be interpreted in accordance with Communication No 4/03 ...?”

“An applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.”

With regard to these questions and the responses given by the Court of Justice, it is welcomed that the Court has confirmed that a specification of goods and services should be sufficiently clear and precise.

It is also helpful to know that the general indications of class headings can be used in some circumstances, although the position remains unclear as to which general indications will be considered sufficiently clear and precise. By way of example, “headgear” (class 25) would appear to have a clearer meaning than “cultural activities” (class 41).

The answer to the third question is less than helpful and the Court, by referring to the alphabetical list, has confused matters.

The Court has said that an applicant using a class heading must confirm whether they wish to cover all of the goods and services “in the alphabetical list of that class”.

The problem here is that each “alphabetical list” (of the Nice classification) is not exhaustive and indeed some are broader than the class headings and others are narrower.

Consequently, covering all the goods and services in that list is not necessarily equal to covering all the goods and services that could be classified in that class.

The position is not satisfactory. The UK Trade Marks Registry has not yet confirmed a new practice following the decision. OHIM has introduced a practice for any new application that uses the class heading, informing applicants that they have to make a declaration if they want to ensure that the application extends to all of the goods and services in the alphabetical list; otherwise, the literal meaning of any general indication will be applied. Going forward, it will be possible to tick a box to confirm this rather than making a declaration, but the effect is the same.

With respect to existing Community trade mark registrations and applications, OHIM has indicated in its Communication No 2/12 (of 20 June 2012) that it will consider that the intention of the applicant was to cover all the goods or services in the alphabetical list (although whether that is legally permissible is probably for a further reference).

Bearing in mind that the alphabetical list is not exhaustive, OHIM’s approach does not appear to be ideal. Certain general indications of class headings are sufficiently unclear that, from a literal meaning, they could be considered to extend to goods or services that rightly fall within a particular class, but that are not itemised within the alphabetical list. This could mean that protection is narrowed as a result of a mark being considered to cover only all the goods and services within the alphabetical list.

Conversely the alphabetical list may include goods or services not within the class headings at all and so there is no clarity or precision (and quite possibly impermissible broadening).

Hopefully, the position will not remain quite so lacking in clarity and precision for too long.

OHIM’s Convergence Programme Working Group has been developing the introduction of “Class Scopes” which will be “sufficiently specific” and help resolve the conflict between OHIM and national offices on the use of class headings.

This project is to be concluded by the end of the year.

The Appointed Person has also to review this case in light of the Court’s decision and a re-referral to the Court is not unheard of. In the meantime, we encourage any applicants to be careful in the drafting of specifications of goods and services.

It will sometimes be worthwhile to use the class heading but also to add reference to any specific goods and services of importance to the business. Please contact your usual D Young & Co advisor in this regard.

Useful links:

Nice classification of goods and services: http://dycip.com/niceclassifications