Translating IP TRANSLATOR
This article first appeared in Intellectual Property Magazine 1 July 2012
Chartered Institute of Patent Attorneys v Registrar of Trade Marks
The long-awaited decision by the Court of Justice in IP TRANSLATOR seeks to provide clarity regarding the specification of goods and services in a trade mark application. The decision also seeks to resolve the conflict between different approaches to the use of class headings.
The Nice Classification consists in four elements: an explanation of the principles by which goods and services are classified; an alphabetical list of goods within each class; a class heading for each class which contains a representative selection of goods or services expressed in general terms; and an explanatory note for each class.
The decision has its roots in an application by the Chartered Institute of Patent Attorneys ("CIPA") to register the trade mark IP TRANSLATOR at the UK-IPO. The application was filed in class 41 for "Education; providing of training; entertainment; sporting and cultural activities". This specification constitutes the class heading for class 41 of the Nice Classification.
The UK-IPO examiner rejected the application on the grounds that the mark IP TRANSLATOR was descriptive of translation services relating to IP. Translation services would fall within class 41 and are included in the alphabetical list for that class; however, on a literal interpretation of the wording, such services would not fall within any of the general terms laid out in the class heading.
In raising the objection, the UK-IPO had applied the approach set out in Communication No 4/03 of the President of the OHIM. This communication, which has been followed by the OHIM since 2003, provides that a specification claim which covers the exact and complete wording of the class heading is deemed to cover all the goods or services in that class. In other words, the IP TRANSLATOR application was deemed to cover all services in class 41, including translation services.
The 'class-heading-covers-all' approach has been applied both by the OHIM and by a number of national registries in the EU, while a literal, 'class-heading-means-what-it-says' approach has been applied by a number of other national registries including, historically, the UK-IPO.
CIPA appealed to the Appointed Person in the UK, who referred three questions to the Court of Justice:
- 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?
- Is it permissible to use the general words of the class headings … for the purpose of identifying the various goods or services covered by a trade mark application?
- Is it necessary of permissible for such use of the general words of the class headings … to be interpreted in accordance with [the class-heading-covers-all approach]?
Having considered the background, the Court first looked at the requirement for clarity and precision in specifications. Looking at the various tests set out in the Harmonization Directive, such as the tests for registrability or likelihood of confusion, the Court found that these tests all require an assessment of the goods and services covered. As such, it impacts significantly on the application of these tests, and on the ability of public registers to communicate the scope of an owner's rights to third parties, whether the specification is sufficiently clear and precise.
Against this background, the Court confirmed that the Directive does require the goods and services specified in a trade mark application to be identified "with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought".
The second question was dealt with by reference to this general requirement for clarity and precision. The general terms used in the class headings of the Nice Classification are acceptable for use in specifications of goods and services provided that in any given case the relevant term is sufficiently clear and precise.
The third question, relating to the OHIM's 'class-heading-covers-all' practice, was more controversial. The Advocate General had recommended that the OHIM's practice under Communication 4/03 should be rejected as being incompatible with the requirements for clarity and precision that are implicit in the legal tests.
Unfortunately, the Court did not follow the Advocate General's Opinion. However, it did not come down clearly in favour of the OHIM practice either. Instead the Court opted for a compromise position that in theory rejects the existing OHIM position but in reality allows the practice to continue subject to cosmetic changes.
Paying lip-service to the freshly minted requirements for clarity and precision laid out earlier in the decision, the Court held that "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 the particular class concerned or only some of those goods or services".
In effect, the class-heading-covers-all approach remains in play with two minor tweaks: it is now necessary to make explicit the intention to rely upon it; and it is limited to the alphabetical list of the goods and services. On the latter point, although not mentioned explicitly, it is to be presumed that for a given registration the relevant alphabetical list will be the one applicable to the edition of the Nice Classification current at the time of filing.
On the face of it this ruling is unsatisfactory and likely to give rise to further complications as registries attempt to put it into practice. In particular, there is a notable lack of internal consistency in the decision. At paragraph 49, the Court explicitly that the specification must allow third party operators to understand the scope of rights, "on that basis alone"; however, a mere twelve paragraphs later the Court confirms a practice which requires an economic operator, on confronting a class heading specification, to reach for their copy of the Nice Classification (after checking carefully which edition was in force at the time of filing) and then consult the relevant alphabetical list in order to ascertain whether they risk committing an infringement of the mark.
The OHIM has already reacted to the decision by publishing Communication No. 2/12 of the President. This communication, released the day after the decision, cancels Communication No. 4/03 and clarifies the OHIM's practice on class Headings going forward. For existing registrations and applications the OHIM will operate on a presumption that such applications, insofar as they cover the whole class heading, are intended to cover all goods or services in that class.
For future applications, where an applicant covers all the terms in a class heading it will be necessary to explicitly indicate whether the intention is to cover all goods or services in the alphabetical list for that class. The Communication also makes it clear that the interpretation of those goods or services once they are deemed to be covered will then proceed on a literal basis, taking the terminology of the alphabetical list as a starting point.
The Communication also confirms that where general terms found in class headings are used within a specification they will be examined in the light of the requirement for clarity and precision. However, it is not clear how far this requirement will apply in cases where those terms appear as part of a class heading that is used as a short hand for covering all goods and services in the alphabetical list. If the two requirements are applied separately then an awkward situation arises where the 'class-heading-covers-all' mechanism is only available in relation to those classes where the terms of the class heading already meet with the requirements for clarity and precision: effectively, a two-tier classification system where very broad coverage can be readily obtained in some classes but not in others.
Overall the decision is unsatisfactory and it is likely that the ruling will result in a greater degree of confusion, as well as a greater number of disputes, as practitioners, trade mark owners and competing businesses contend with both a tougher examination on specifications and, counter-intuitively, an increase in the implied scope of some trade mark registrations which, unlike under the previous OHIM practice, will apply in both registry proceedings and infringement actions.