July 19, 2012
Previously published on July 2012
What you need to know - the basics All trade mark applications in Europe must be filed with respect to a defined list of goods and services, for which the trade mark is to be protected. The goods and services that can be covered by trade marks are divided into 45 distinct categories, known as "Classes". The scope of each of these Classes is defined by a broadly worded "Class Heading". Further to each broad Class Heading, the specific indications of goods or services that can be contained within each Class are detailed in an extensive list provided and periodically updated by the World Intellectual Property Organisation (WIPO) in Geneva. The traditional view in Europe, until the decision in IP TRANSLATOR, was that each of the goods or services in the detailed list at WIPO was a subcategory of at least one of the respective Class Headings. For example, "Knitwear" was considered a subcategory of "Clothing" in Class 25. Accordingly, registering a trade mark for a Class Heading was previously an effective claim to the entirety of a Class. For example, a registration for "Clothing, footwear, headgear" in Class 25 would cover everything in that Class, from aprons to wristbands. However, the decision in IP TRANSLATOR states that goods and services must be defined 'with sufficient clarity and precision', namely that each item within a trade mark specification is generally to be interpreted literally. That is to say, that "aprons" and "wristbands" are now likely to fall outside the definition of "Clothing, footwear, headgear", and thereby merely specifying the Class Heading "Clothing, footwear, headgear" in Class 25 in itself will no longer claim the entirety of the Class at many European trade marks offices. The same issue also now applies to several other Classes (but not all). It is still possible to claim the entirety of a Class, notwithstanding this decision in IP TRANSLATOR. Edwards Wildman can advise you on obtaining the broadest and most effective trade mark protection for your business, and also in minimising the risk of your trade mark protection being constricted by future changes in European policy regarding the interpretation trade mark specifications. Background On 16 October 2009, the Chartered Institute of Patent Attorneys (CIPA) applied to register the mark 'IP TRANSLATOR' in the United Kingdom for the general Class Heading in Class 41 of the Nice Classification system (namely "Education; providing of training; entertainment; sporting and cultural activities"). The application was rejected by the UK Intellectual Property Office on the basis that the application covered not only services listed in CIPA's application, but, by virtue of the inclusion of the Class Heading, also included all services falling within Class 41 shown in the alphabetical list provided under the Nice Classification system, including "translation services" for which the mark 'IP TRANSLATOR' was held to be devoid of distinctive character and descriptive in nature. The IP TRANSLATOR decision - promoting "clarity and precision" in the vaguest possible way... On 19 June 2012, the Court of Justice of the European Union stated that it requires the goods and services for which protection is sought to be identified by the applicant with sufficient 'clarity and precision' to enable the competent authorities to determine the extent of the protection conferred by the trade mark. Significantly, the Court observed that some of the general indications in the Class Headings are in themselves unclear as they are too general or too varied to be compatible with a trade mark's function as an indication of origin for specified goods and services. The Court of Justice also held that use of Class Headings to identify goods and services was not prohibited under EU law. The Court also observed that for a national trade mark application which contains the whole of the relevant Class Heading(s) to identify goods and/or services in the relevant Classes, the applicant must specify whether the application is intended to cover all the goods and services in the Class or only some of those goods and services. Outcomes Use of Class Headings The use of full Class Headings, for a CTM application or national application, may be sufficient in some cases to indicate which goods and services are to be protected. This is as long as the intention to cover the entire Class or not is clearly and explicitly stated. Partial use of the Class Headings to claim part of a Class is also likely to be acceptable where the relevant headings are clear enough to indicate with 'sufficient clarity and precision' the goods or services claimed. However, the partial use of Class Headings, which are unclear or very broad, is likely to result in objections from Examiners where the wording used does not clearly or specifically indicate any goods or services, but instead ambiguously designates a broad category of goods or services. For example, goods in Class 15 (Musical instruments) are clear cut as to the goods they cover, however Class 28 (Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees) demonstrates Class Headings which would be considered insufficiently clear or precise to indicate which goods are protected. Recommendations Existing CTM applications and registrations covering the entirety of Class Headings are unlikely to be affected. National registries are also likely to treat applications filed prior to the decision in line with their practices before the decision was issued. A perhaps unintended consequence of this decision is the effect of partial refusals. It is clear that certain Classes contain a combination of broad and specific wording. In the event that an entire Class Heading is used to claim the entirety of a Class (for example: "Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees" in Class 28, and the more specific element of that specification (ie: decorations for Christmas trees) is refused for any reason, the remainder of the wording (Games and playthings; gymnastic and sporting articles not included in other classes) will not cover the entire Class, and furthermore will not identify the goods covered by the mark with sufficient clarity and precision, and will also thereby be liable to refusal following the rejection of "decorations for Christmas trees". Applicants filing applications using Class Headings alone must be wary of this potential pitfall. Another consequence of this decision will be felt when negotiating specification restrictions from third parties in opposition proceedings. For oppositions against applications filed after 20 June 2012 claiming all goods or services in the Class, opponents may wish to have the applicant withdraw any stated intention to claim all goods/services as a part of the process of settling the opposition on the basis of a specification restriction.
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