Ip Translator

The Nice Agreement concerning the International Classification of Goods and Services has provided "a common classification of goods and services for the purposes of the registration of marks" since 1957.

Maintained by the World Intellectual Property Organisation (WIPO), the classification contains 34 classes of goods and 11 classes of services, each class containing a class heading followed by an index of items falling within the scope of the said heading.

The Nice classification is used throughout the EU, the idea being that applications are examined in a uniform manner throughout the Union. In practice this has not happened as perfectly as anticipated.

At least 9 of the EU Member States have adopted a "means-what-it-says" interpretation to the Classification System. OHIM however (along with 3 others) operates a "class heading covers all" approach. OHIM's Communication 4/03 of 16 June 2003 specifically provides for this interpretation.

On 16 October 2009, CIPA applied to register the designation "IP TRANSLATOR" using the class heading for Class 41 namely "education; providing of training; entertainment; sporting and cultural activities".

The Registrar rejected the application following Communication 4/03 concluding that by using the class heading, CIPA were effectively claiming all services within class 41. As "translation services" fall within the class, the mark was considered devoid of the distinctive character required for securing trade mark registration.

CIPA's challenges led to the matter being referred to the ECJ for a Preliminary Ruling. The questions for clarification being:-

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 heading (Nice Classification) for the purpose of identifying the various goods or services covered by a TM 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 4/03?

The Judgment of the ECJ concluded that:-

1. There needs to be a common approach adopted by all EU Member States when identifying the goods and services of a mark.

2. Trade Mark applications must word its specification of goods and/or services with sufficient clarity and precision to enable examining authorities to determine the scope of protection accurately.

3. Use of general headings is acceptable when specifying goods and/or services providing that there is sufficient clarity when doing so. Some classification headings are relatively clear whilst others could lead to ambiguity. This needs to be looked at on a case by case basis.

4. The "means-what-it-says" approach is to be adopted in favour of the "class heading covers all approach" unless the applicant for registration makes it clear that they wish to include all goods and services within the class.

Following the Judgment, OHIM made an announcement by way of Communication 2/12 stating that "a literal approach which seeks to give the terms used in those indications their natural and usual meaning, will be consistently used in all proceedings before the Office".

Therefore, for applications filed after 21 June 2012 where the class heading is adopted as the specification, applicants must complete a declaration expressly indicating whether or not the whole of the class is to be covered.

Whilst the ruling has clarified the situation when it comes to using the class headings, it has also raised a number of new questions which over time will no doubt be addressed.

It is now for Attorneys to ensure that when drafting specifications they adequately provide for their client's needs without exposing them to unnecessary objections.