IP Translator still a source of confusion
The German Patent and Trademark Office (DPMA) recently re-confirmed it will not change the way it examines trademark applications in Germany as a result of the Court of Justice of the European Union’s (CJEU) IP Translator ruling, casting further doubt on its application in other national trademark offices and courts.
The CJEU delivered its ruling on the case, which was originally brought by the UK Chartered Institute of Patent Attorneys (CIPA), on June 19 last year.
It was hoped the judgement would settle different interpretations of the scope of trademark registrations under the Nice Agreement’s classification system, which groups products into classes labelled with a heading indicating products in that group.
But Richard Ashmead, a trademark specialist and CIPA spokesperson, said it has led to widespread confusion.
European law requires that trademark owners, when registering a trademark in the EU, must state with sufficient clarity and precision which goods or services they wish to register.
Some trademark offices, including the Office for Harmonization in the Internal Market (OHIM), have taken a ‘class heading covers all’ view of the law, in the belief that applicants who list a Nice class heading in their application should be granted protection for all goods and services in that class.
Other courts and trademark offices, including DPMA, grant protection only for specific and clearly defined goods and services, whether or not a class heading wording is used, under a ‘means what it says’ approach, leaving trademark owners holding different rights in different EU countries.
In its judgement, the CJEU ruled that there must be a more clear and consistent approach to trademark registrations. In line with the DPMA’s practice, the CJEU said that class headings cannot be interpreted as covering all possible goods in a class.
But the CJEU also said applicants seeking protection for most content in a particular class can apply using a class heading wording, providing they submit a separate declaration stating their intention to register all goods covered in the Nice alphabetical list of that class, which can be more or less extensive than that covered by the class heading wording.
In its response to the judgement, the DPMA said that asking applicants to submit a declaration of their intention to cover all goods in the alphabetical list by using a class heading would not be sufficiently clear and precise and would effectively contradict the CJEU’s assertion that applications must be clear and unambiguous.
The DPMA said this approach would cause confusion over the scope of registrations and as a result, confirmed it will continue to practice its current method of granting protection for specific goods and services mentioned.
The DPMA also said that it sees no basis for the use of a declaration of intention to cover all goods in an alphabetical list when using a class heading wording, that it sees such a declaration as a potentially illegal expansion of the scope of a trademark application and that it believes this declaration of intent approach is inconsistent with the requirements of legal certainty.
Wojciech Kreft, associate at Baker & McKenzie in Frankfurt, said the DPMA’s decision was disappointing.
“The decision really disregards the ruling of [the CJEU], which is quite precise. It will be interesting to see if this practice remains, or if the German federal court finds it inconsistent with the European court’s decision and lifts it,” he said.
“It could be considered a positive for trademark owners that the system in Germany will remain the same, but this is outweighed by the disadvantage that there will be a lot more inconsistencies for applicants registering Community trademarks, as national offices will be interpreting the ruling differently.”
But Ashmead said the DPMA’s decision, (which France’s Institute of Industrial Property echoed in a decision published on 28 December last year) highlights the inconsistencies in the CJEU’s ruling.
“The CJEU clearly answered two important questions in its judgement, confirming that goods and services in applications must be described clearly and precisely ‘as they stand’, and that class headings can be used in trademark applications but only if they are clear and precise ‘as they stand’. These answers were welcomed by CIPA.
“But instead of answering a third question – whether it is wrong in law to read class headings to indicate all goods in a class – the CJEU has said that people can use class headings, providing they say ‘I mean this heading‘s wording not to mean what it says, but to mean the full alphabetical list of classification for that class’.”
This answer is contradictory to the two clear answers provided by the CJEU, said Ashmead, and makes the IP Translator ruling difficult – if not impossible – to apply.
“People don’t know what to do,” he said. “The third answer of the judgement could broaden or narrow the list of goods covered in a class. You could lose critical protection by changing from the class heading to the alphabetical list. The aim of the CJEU’s third answer may have been to help applicants claim all goods/services in a class but in my view, that is impossible – if you cannot define the goods/services you want to cover clearly and precisely you cannot claim them.”
It’s unclear how trademark offices and national courts will now proceed. Ashmead said the CJEU is unlikely to see the confusion surrounding its judgment as reason to reconsider, absent a new reference case coming before it from a national EU court, or a re-reference from the appointed person appeal authority in the still current UK IP Translator case.
If this were to happen, Ashmead said there is no guarantee that the CJEU would provide further clarification on how the existing rule should be applied, and said strongly doubts the court will amend its June decision. “I don’t imagine it will happen,” he said.
