EU Trademark Case Leads To Rules On Use Of Nice Classification

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The perhaps underestimated list of goods or services that applicants file with their trademark applications play an essential role in defining the protection the trademark will have.

Registrars use this list to determine if an application should be refused and if it limits a trademark’s exclusive rights. The goods or services listed in an application can also motivate oppositions from competitors with prior rights or cause the future cancellation of the trademark.

A recent trademark case in the European Union calls into attention the need for authorities to establish clear, predictable rules to identify goods and services in trademark systems. Further, the case highlights why it is important for applicants to carefully consider which goods or services they wish to protect and clearly identify them in an application.

In the implementation of the European Union Court of Justice (ECJ) judgment of 19 June 2012, case c-307/10, Chartered Institute of Patent Attorneys (CIPA) v the United Kingdom Registrar of Trade Marks (known as the IP Translator case), the Office for the Harmonization of the Internal Market (OHIM) in February issued three Common Communications. OHIM is the European Union (EU) trademark office.

The communications address the practice of using class headings under the Nice Agreement Concerning the International Classification of Goods for the Purposes of the Registration of Marks to identify goods and services in a trademark application and report on the outcome of collaborative work OHIM has been doing with a view to implementing the IP Translator judgment.

The list of goods or services – one of two essential elements in a trademark application – is used to define the scope of protection that a trademark will have, limits the owner’s rights to the function of the trademark, and allows registrars to evaluate if there are grounds to refuse the application.

The IP Translator judgment is of special importance because it unified (previously divergent) examination practices across the EU and set clear rules to identify goods or services in a trademark application. Moreover, it changed the way in which EU registrars evaluate applications using Nice class headings to identify goods or services.

Back on 25 February 2010, the United Kingdom Intellectual Property Office (UKIPO) refused the registration of “IP Translator” to identify services in Class 41 of the Nice Classification.

The current Nice Classification consists of 34 classes and an alphabetical list of the goods or services in each class. It classifies items in the same way in all of the 84 states party to the Nice Agreement with the purpose to facilitate the registration of trademarks. Its use is mandatory.

In the case, to identify the services to be covered by “IP Translator”, the applicant used the heading of Class 41 “Education; providing training; entertainment; sporting and cultural activities.”

The UK registrar interpreted that the application not only covered the services in the heading but also every other service falling within Class 41 and denied the registration on the basis that “IP Translator” lacked distinctive character and, incurred in an absolute ground for refusal, that it was descriptive to identify “translation services”, included in this class.

CIPA appealed the decision contending that its application did not specify, and therefore didn’t cover, “translation services.” Being that a number of countries in the EU and OHIM considered the use of a class heading as a claim to cover all of the goods or services of the class, the UK High Court of Justice decided to raise three questions to the ECJ.

The court asked whether the EU Directive 2008/95, to approximate the trademark laws of the member states, had to be interpreted as meaning that it requires that the goods and services for which trademark protection is sought should be identified with a certain degree of clarity and precision.

If so, it asked whether Directive 2008/95 precludes an applicant from identifying those goods and services by means of the general indications of the class headings of the Nice Classification, and precludes the use of all the general indications of the heading of a particular class of the Nice Classification from being considered to be a claim with regard to all the goods and services in that particular class.

Before the judgment, OHIM and several national trademark offices in the European Union accepted class headings to identify the goods or services for which protection was sought. Furthermore, it was assumed that the use of a class heading constituted a claim to cover all of the goods or services falling within the particular class.

But the “class heading covers all” practice was not applied uniformly in all of the member states of the EU. When a Nice class heading was used in a trademark application, some offices granted protection for all of the goods and services falling within the particular class, while other countries (i.e., Austria, Germany, Denmark, Spain, France, Poland, Ireland, Sweden and Slovakia) had taken the approach of restricting protection to the specific goods and services listed in the trademark application.

The ruling in the IP Translator case found that OHIM’s “class heading covers all” practice did not guarantee legal certainty, and that “Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trademark is sought to be identified by the applicant with sufficient clarity and precision.”

The court upheld that the directive does not preclude the use of the general indications of the class headings of the Nice classification, provided that the goods or services are identified in sufficiently clear and precise manner. Moreover, the ruling made clear that an applicant who uses a class heading must specify whether the application is intended to cover all the goods or services in the alphabetical list of that class or only some.

The day after the 19 June 2012 judgment, OHIM issued Communication 2/12 “concerning the use of class headings in list of goods and services for Community trademark applications and registration.” This communication established new practices and clarified the treatment for Community trademarks registered before 21June 2012 as well as for the Community trademark applications filed before this date.

New Communications on Implementation

With this background and the commitment to be “further increasing transparency and predictability” to benefit the users of the trademark system, on 20 February 2014, OHIM issued the three new communications to implement the IP Translator judgment.

The Common Communication on the Implementation of IP Translator v1.2 makes available an overview of the way each trademark office in the EU interprets the scope of protection of domestic trademarks using class headings, filed before and after the IP Translator judgment.

The communication presents the way national offices reflect (in their registers, publications and trademark certificates) the applicants’ intention with respect to class headings and covering the classes’ alphabetical lists. The offices either list all goods and services individually or make available a general reference to the applicable edition of the alphabetical list.

Moreover, the communication makes available information regarding the way the national offices interpret the scope of protection of community trademarks containing a class heading, filed before and after the judgment, and how an applicant can obtain protection for the full alphabetical list for trademarks filed after the IP Translator judgment. In parallel, the document provides information on the way OHIM interprets the scope of protection of national trademarks containing Nice class headings.

Trademarks filed after the ECJ judgment are to be interpreted literally, while trademarks filed before the judgment will be considered to have the scope of protection awarded by the national office.

If the national office interpreted that the class heading covered all goods and services in the class, OHIM will interpret the trademark to cover the class heading, on a literal basis, plus the alphabetical list of the Nice edition in force at the time of filing.

Common Communication on the Common Practice on the General Indications of the Nice Class Heading v1.1, presents 11 general indications of the Nice class headings found by the trademark offices of the EU as non-acceptable to identify the goods or services for which protection is sought in a trademark application.

The Communication features the reasons to consider that, from the 197 general indications of the Nice class headings, these 11 indications lack clarity and precision. The Communication also adds to its previous version, published on November 2013, an annex with the implementation dates of the agreement in each national office.

The 11 non-acceptable general indications of the class headings are: “goods of common metal not included in other classes” in class 6, “machines” in class 7, “goods in precious metals or coated therewith” in class 14, “goods made from there materials [paper and cardboard]” in class 16, “goods made from these materials [rubber, gutta-percha, gum, asbestos and mica]” in class 17, “goods made of these materials [leather and imitations of leather]” in class 18, “goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics” in class 20, “repair”, “installation services” in class 37, “treatment of materials” in class 40, and “personal and social services rendered by others to meet the needs of individuals” in class 45.

The communication makes it clear that registrations containing one of the non-acceptable 11 indications will not be changed ex officio, and announces a future communication establishing a “common understanding of the requirements necessary to achieve clarity and precision in the identification of goods and services in an application.”

Complementing the above, the Communication on the Common Practice on the Acceptability of Classification Terms v1.0 presents guidelines to help identify when a classification term meets the requirement to be sufficiently clear and precise. According to the communication, sufficient clarity and precision in a description of goods and services may be achieved by identifying factors such as characteristics, purpose or market sector (i.e., consumers and/or sales channels, skills and know-how to be used).

The communication points out that while a term may be considered clear and precise in a particular class, further specification of the same may be necessary if protection is sought for a specialised category or market belonging to a different class.

A “live document that will be constantly updated,” the Communication on the Common Practice on the Acceptability of Classification Terms aims to support the construction of a harmonised database of acceptable terms.

Looking Ahead

In sum, the IP Translator case gave the EU trademark offices an opportunity to clarify rules to identify goods and services in applications. Moreover, it led to the revision of the use of Nice class headings.

The fact that the ECJ judgment disapproved and declared the “Nice heading covers all” practice as unacceptable raises questions as regards the same practice in other states party to the Nice Agreement.

In time, the precedent set by the IP Translator judgment may be a catalyst for trademark offices outside the EU to evaluate requirements of clarity and precision in applications and change “Nice heading covers all” practices.

Angela Garcia M. is a guest contributor to Intellectual Property Watch. She holds a law degree from the Universidad de Lima, in her home country of Peru, a master’s degree in intellectual property law from the Universidad de Alicante-Spain, and a master’s degree in business administration from the Business School Lausanne-Switzerland. Her experience includes providing legal support to INDECOPI, the Peruvian IP Office, Organisation for a Geographical Indications Network, and the World Intellectual Property Organization.

 

Angela Garcia Medina may be reached at info@ip-watch.ch.

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