Time for the OHIM to make a change to its class heading practice?
This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.
Case No. C-307/10 CIPA v Registrar of Trade Marks
The Chartered Institute of Patent Attorneys filed an application for the mark IP TRANSLATOR for the Class 41 class heading, which includes "education; providing of training; entertainment; sporting and cultural activities". The UK-IPO rejected the application claiming that the mark was descriptive of "translation services", which although not specifically listed in the application, were nevertheless covered as a consequence of the use of the class heading to specify the services. In reaching his conclusion the UK-IPO hearing office referred to the OHIM practice regarding the use of general indications in class headings to identify goods and services.
The Applicant appealed to the Appointed Person claiming that the UK-IPO had erred in finding that the class heading should be interpreted as covering all goods and services in a particular class. The matter was subsequently referred to the Court of Justice and Advocate General (AG) Bot's opinion was delivered on 29 November 2011.
The AG considered the legal background and referred to Communication No. 4/03 of the President of OHIM, which stated that the use of general indications or the whole class heading constitutes a proper specification of goods and services from the point of view of the OHIM. Importantly, the Communication went on to say that "the 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this, 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".
Identification of goods and services
The AG emphasised that the system whereby goods and services are classified in one of 45 different classes for the purposes of registration is done purely for administrative purposes in order to facilitate searching and registration of trade marks. Under the provisions of the Regulation and the Directive it is essential that goods and services be clearly identifiable. However, the legislation is silent as to whether the general indications in the class headings are sufficient for these purposes.
The AG considered that there are compelling reasons for ensuring that goods and services are identified with clarity and precision when seeking trade mark protection. This includes the need to ensure that national trade mark authorities and competitors can assess whether absolute or relative grounds for refusal are present. Also, it was considered vital to ensure that the rights conferred by a trade mark registration be appropriately limited so as not to interfere with the principles of the free movement of goods and the freedom to provide services within the EU.
According to the AG, the objective of clearly and precisely identifying the goods and services can be achieved in either of two ways:
- A specific list of goods or services for which the applicant seeks protection
- Identifying the basic goods or services so that trade mark authorities and competitors can identify precisely the essential objective characteristics and properties of the goods and services covered.
In relation to the first, the AG conceded that requiring a specific list could be tricky due to the different ways in which certain goods and services may be described.
The use of class headings
The general indications contained in class headings will be acceptable where they are sufficiently clear and precise to enable the authorities and competitors to determine the scope of protection conferred by the trade mark. However, in some cases, the general indications would be considered too general or relate to goods and services which are too varied.
Therefore, neither the Directive nor the Regulation prevent the use of the general indications in class headings to identify goods and services, provided that they satisfy the requirements of clarity and precision. This should be assessed on a case by case basis.
Communication No. 4/03 of the President of OHIM
It is clear that the interpretation adopted by the OHIM in Communication 4/03, whereby the use of a class heading will always be deemed to include all goods or services in that particular class, contradicts the principles laid down in the Regulation. The AG stated that Communication No. 4/03 is too vague or indefinite and as a consequence it cannot guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether a national or Community trade mark.
The practice as regards the use of class headings to specify goods and services has not been uniform throughout the EU, with the OHIM and some national trade mark offices applying a "class-heading-covers-all" approach while others are reluctant to grant such broad protection. If the Court follows the AG's opinion then this will provide much needed clarity in this area. However, it would also likely lead to the end of the OHIM's current approach to interpreting class headings and may require some trade mark owners to consider whether their trade mark registrations offer adequate protection.
Simon McCormack, Solicitor, IP Protection and IP Enforcement and Litigation at Fieldfisher.