By Professor Dr. Alexander von Mühlendahl
The Court of Justice of the EU (ECJ) establishes requirements of clarity and precision for the indication of goods and services in trademark applications and registrations and rules on the scope of class headings.
For many years questions of how to claim goods and services in trademark applications and the ability to use generic indications such as the class headings of the Nice Classification have been debated in Europe; practices of trademark offices as to the acceptability of class headings differed.
The Chartered Institute of Patent Attorneys, the organization of U.K. patent attorneys, brought a test case in the U.K. Intellectual Property Office (UKIPO), requesting registration of “IP TRANSLATOR” for all the class headings in cl. 41, namely “education; providing of training; entertainment; sporting and cultural activities”. The UKIPO refused the application, concluding that it covered not only these services but also every other service properly classified in cl. 41, including “translation services” (the Alphabetical List established as part of the Nice Classification contains “translation” as one indication in cl. 41) for which the mark was descriptive. The Institute appealed, contending that its application for registration did not specify, and therefore did not cover, translation services. The appeal was heard by the Appointed Person (Geoffrey Hobbs, QC), who – as was the purpose of this case as test case – referred the following questions to the ECJ:
In the context of [Directive 2008/95] …:
1. 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?
2. Is it permissible to use the general words of the class headings of the [Nice Classification] for the purpose of identifying the various goods or services covered by a trade mark application?
3. Is it necessary or permissible for such use of the general words of the Class Headings of [the Nice Classification] to be interpreted in accordance with Communication No 4/03 …?
The reference to theOffice of Harmonization for the Internal Market’s (OHIM)Communication No 4/03 was included because in that Communication OHIM had explained in detail its approach to the issues, including the position that a use of all the class headings of a particular class was equivalent to claiming all goods or services properly classified in that class.
The ECJ, in its decision of June 19, 2012, held as follows:
Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.
Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, concluded at the Nice Diplomatic Conference on 15 June 1957, last revised in Geneva on 13 May 1977 and amended on 28 September 1979, to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.
An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement 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 that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
Only one day later, on June 20, 2012, OHIM issued a new Communication (Communication No. 2/12), implementing the ECJ judgment, and revoking the 2003 Communication. Reactions from other offices have not become known so far.
Remarks
The requirement that specifications of goods and services must be sufficiently clear and precise is no surprise, in view of the ECJ’s earlier cases regarding smell marks (Sieckmann), colour combination marks (Heidelberger Bauchemie), and retail services (Praktiker). It is for the respective offices – and these of course include OHIM – to decide whether a particular term used in a specification satisfies the requirement of clarity and precision.
It follows from the judgment that class headings are as such not objectionable, but some may be too vague. For example, the German Patent and Trademark Office objects to “machines” in cl. 7, and “repair” in cl. 38, whereas OHIM has always accepted all class headings.
OHIM’s convergence program has been focusing for some time on classification issues, and it should be possible to obtain a very large (if not complete) consistency among the trademark offices in Europe on which class headings – if any – need clarification, or any other “generic” terms which are (or are not) acceptable under the “clear and precise” standard.
As regards existing trademark applications and registrations which contain specifications which are not in conformity with the “clear and precise” standard, questions as to their validity will arise and will have to be solved. A proper restriction of the specification or surrender of some of the goods or services, making the specification as a whole compliant with the “clear and precise” standard, would appear to be the proper approach. OHIM’s Communication No 2/12 actually points out that the right to restrict or surrender in part is expressly reserved.
On the scope of coverage the Court’s judgment is disappointing and will lead to much confusion. An analysis of the relation between vagueness of generic indications and intended coverage is missing. The choice of all or some of the goods or services in the Alphabetical List being available only when all class headings of a particular class are part of the specification also would require some justification. There is no explanation why the Alphabetical List is or should be the subject of claims. Most trademark applicants seem to use either the class headings or their own application-specific lists of goods or services, rather than terms from the Alphabetical List. OHIM’s Communication announced that Community trademark applicants have the option of checking a box, thus claiming all the goods in the alphabetical list. It appears likely that much will still happen in this regard.
Current best advice seems to be, when broad coverage is desired, to continue using the class headings and adding categories of goods or services broadly defined for which the mark is likely to be applied in the future.
© 2012, BARDEHLE PAGENBERG
[This post originally appeared in the BARDEHLE PAGENBERG IP Report 2012 III.]
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