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No. 26
September 2012
International Association for the Protection of Intellectual Property
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What are the consequences of the IP Translator case?
Charles Gielen and Boudewijn van Vondelen, NautaDutilh, Amsterdam, The Netherlands

The IP Translator -case, which the European Court of Justice decided on June 19, 2012, concerned an application for registration of the trademark IP Translator for education, providing of training, entertainment, sporting and cultural activities in Class 41.

The UK Registrar refused the registration on the grounds that the sign lacked distinctive character and was descriptive for translation services and, therefore, did not qualify as a trademark.

Even though the applicant indicated that translation services were not included in the application, the Registrar followed the practice of the Office of Harmonization for the Internal Market (“OHIM”) in Alicante and concluded that, because the application mentioned all services in the class-heading of Class 41, the application claimed protection for all possible goods and services in that Class.

The Nice classification includes an alphabetical list of goods and services containing about 12,000 entries. When applications are filed, the applicant may use the class-headings (a list of general terms available for each class to describe the type of goods and services that fall into that Class), descriptions from the alphabetical list or other terms that may be more suitable to describe the applicable goods or services under the mark claimed, as long as the description can be classified into one of the 45 Classes and meets the standards of clarity and precision applied by the registration authorities. For example, while the official alphabetical list for Class 41 contains only 167 terms, OHIM has already accepted over 3000 terms for this class alone. There is no limit to the number of acceptable terms within the framework of the classes.

The advantages of using a class-heading are clear: these terms are available in all languages, are taken directly from the Nice Agreement and are broadly accepted by the national trademark offices. However, even though advantageous for the national offices, from the perspective of the applicant the “standard solution” is not the best one. The class-heading of Class 9, for example, contains both fire-extinguishers and computers, hardly ever a suitable combination for a single company.

In 2003, OHIM eliminated this problem by confirming its “class-heading covers all” practice. However, most national offices did not follow this new practice. For example, if the application is filed for all general terms of the class-heading, most national offices consider this to “cover what it says”, i.e. only the specific terms mentioned.

The Court 's decision makes it clear that the practice followed by OHIM is not acceptable: a class-heading does not automatically cover all goods or services in that class. Certain general terms in the class-headings do not meet the level of clarity and precision required for a trademark registration because they are too general and cover goods or services which are too varied.

Comments:

OHIM immediately changed its “class-heading covers all” practice and will continue to accept the use of general indications of the class-headings, but on a case-by-case basis, provided that they meet the required level of clarity and precision.

OHIM announced that, with regard to Community trademarks registered before this change and which use all the general indications listed in the class-heading of a particular class, it will assume that it was “the intention of the applicant, in view of the content of the previous Commmunication 4/03, to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made”, but it is questionable whether OHIM's standpoint will hold up in court.

Although this decision seems to give clear guidance for future applications, all existing registrations which contain some or all of the terms from the class-headings are now suspicious. When the general terms from a certain class-heading are used, the applicant is required to specify whether his application is intended to cover all the entries from the alphabetical list of goods or services of that class, or only certain of these goods or services from that class, in which case he will have to specify which goods or services belonging to that class are intended to be covered.
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