European Union: What's Next After The IP Translator Decision By The European Court Of Justice?

The IP Translator case decided by the European Court of Justice on 19 June 2012 already raised much interest and OHIM even changed its practice overnight after the decision of the ECJ. However, much remains unclear: how will the national offices respond, what will happen to existing registrations and will the decision have any other consequences? In other words, what's next?

In the IP Translator case concerned an application for registration of the trademark IP TRANSLATOR for education, providing of training, entertainment, sporting and cultural activities in class 41, but the application was refused.

The UK Registrar held that the denomination IP TRANSLATOR lacks distinctive character and is descriptive for translation services, and thus does not qualify as a trademark. The applicant stated that translation services were not included in the application, but the Registrar followed the classification practice of OHIM in Alicante. Because the application mentioned all services in the class-heading of class 41, the Registrar concluded that the application claimed protection for all possible goods and services in that class. (The class-heading is the list of general terms available for each class to describe the type of goods and services that fall into that class). Translation services are not part of the class-heading but, according to the Nice classification, fall into class 41.

The Nice classification includes an alphabetical list of goods and services containing about 12,000 entries. When applications are filed, the applicant can use the class-headings, 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 the 45 classes and meets the standards of clarity and precision applied by the registration authorities, such as OHIM or the Benelux Office. 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 obvious. These terms are available in all languages, come directly from the Nice Agreement and are broadly accepted by the national trademark offices. These offices will not require the applicant to provide a further explanation of customised lists of goods which are found to be too vague or otherwise unclear. The offices themselves enjoy the biggest advantage, however, because from the perspective of the applicant the 'standard solution' is often 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. Most EU national trademark offices, including the Benelux Office, did not follow this new practice. If an application is filed for all general terms of the class-heading, the Benelux Office considers this to "cover what it says", i.e. only the specific terms mentioned.

The ECJ decision makes it clear that the practice followed by OHIM is not acceptable. An application referring to a class-heading does not automatically cover all goods or services in that class. The ECJ observes that 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. This is somewhere between the "class-heading covers all" approach and the "covers what it says" approach. Although it gives clear guidance for future applications, all existing registrations that contain some or all of the terms from the class-headings are now under suspicion.

When the general terms from a class-heading are used, the ECJ says that it is for the competent authorities to assess on a case-by-case basis, based on the goods or services for which the applicant seeks protection, whether those indications meet the required level of clarity and precision. When all of 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 has to specify which goods or services belonging to that class are intended to be covered. 

On the very next day after the ECJ decision OHIM published an official communication, announcing changes to its previous practice in order to implement the ECJ decision. OHIM will continue to accept the use of the general indications of the class-headings, but on a case-by-case basis, provided that they meet the required level of clarity and precision.

As regards Community trademarks registered before the change in practice and which use all the general indications listed in the class-heading of a particular class, the Office announced its standpoint that "the intention of the applicant, in view of the content of the previous Communication 4/03, was 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."

When filing new applications which use all the general indications listed in the class-heading of a particular class, the applicant must expressly indicate whether he intends the application to cover all the goods or services included in the alphabetical list of the particular class or only some of those goods or services.

Comments:

OHIM's quick response suggests that it anticipated its defeat. However, the national offices do not seem to have foreseen this outcome and, at least in Benelux, are not yet sure how to adapt their practices. While OHIM has already provided a form which applicants can use when their applications mention all general terms of the relevant class-heading, such practical solutions are not yet available at a national level. More importantly, the status of the existing registrations is very unclear. For example: what about registrations made for entire class headings, without specification?

It is questionable whether OHIM's standpoint will hold up in court. We expect that third parties will challenge existing registrations, arguing that they are not sufficiently clear and precise.

We have seen a similar situation after the ECJ decision in the Libertel case, where an application to register a single colour was refused. The Court decided that in order to meet the requirement of graphic representation, an application for these colour marks must be accompanied by an internationally accepted colour code, such as a PMS or RAL code. In the Benelux, there have been cases where existing registrations for colour marks have been declared null and void, because at the time of the filing no colour code was added (or required by the trademark offices).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.