1 August 2012Trademarks

CJEU rules on class headings in IP Translator case

The CJEU has ruled that there must be a clearer and more consistent approach to registering trademarks under the Nice Agreement’s classification system.

In the dispute known as the IP Translator case, the CJEU ruled in favour of the UK’s Chartered Institute of Patent Attorneys (CIPA). The court said applicants wishing to register a trademark must specify which goods or services they wish to protect “with sufficient clarity or precision to enable competent authorities and economic operators…to determine the extent of the protection conferred by the trademark”.

Commenting on the decision, patent attorney and CIPA spokesman Richard Ashmead, said it was “an important step towards clarity and consistency of EU trademark law, and much in the public interest”.

The Nice Agreement, signed in 1957, was designed to provide a streamlined approach to registering trademarks. But different interpretations of the classification system, which groups products into classes labelled with headings indicating products in that group, have left trademark owners holding different rights in different EU countries.

Some authorities assume an application to register goods under a class heading automatically applies protection to all products in that class. Others will only grant protection to the specific goods or services mentioned in an application.

In its judgment, dated June 20, 2012, the court said trademark owners must specify whether an application concerns some, or all, of the goods or services in a class. If an applicant is only seeking protection for some goods or services, the court said that it must clearly specify which products are to be protected.

The Office for Harmonization in the Internal Market (OHIM) said it would be working with national offices in the EU to adopt a common approach to class headings.

While the ruling has provided some clarity, questions remain over how it will work in practice. “I am relatively happy with the judgment,” said Nunzia Varricchio, chair of Marques (the Association of European Trade Mark Owners) and senior trademark attorney at DSM, “but the challenge lies in interpretation and implementation.

“It is reassuring that OHIM promptly released a practice update, but Marques is concerned about the interpretation of the CJEU’s implication that if an applicant wants to cover all good or services in a particular class, he simply recites the class heading with a declaration indicating such,” she said.

“In Marques’s view, this clearly contradicts the notion of ‘sufficient clarity and precision’, and would not be in the interest of brand owners,” she added.

Niamh Hall, trademark attorney at law firm FR Kelly in Dublin, and vice president of the Association of Patent and Trademark Attorneys, also expressed concern.

“Class headings are now considered to cover the alphabetical list of the Nice Classification, not all possible goods in that class,” said Hall. “This means we will have to become accustomed to referring to the current alphabetical list as well as all previous editions,” she said.

“There are issues regarding the treatment of existing applications and registrations which cover all, but not part of the class heading,” she added. “It is not clear how applicants will be permitted to indicate that they intend to cover all the goods in a class.”

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Jurisdiction reports
1 February 2012   The purpose of trademarks is to identify the goods or services offered by a party and to differentiate those goods or services from those of others.