On 19 June 2012, the European Court of Justice (“ECJ”) handed down its ruling in the matter of Chartered Institute of Patent Attorneys (“CIPA”) v Registrar of Trade Marks. The case revolved around the scope of protection afforded to a trade mark application that had been filed for the class 41 heading of the Nice Classification.
International trade mark law is governed by the Paris Convention, which served as a basis for the introduction and adoption of the Nice Classification. The Nice Classification contains 34 classes for goods and 11 service classes and is accompanied by a detailed alphabetical list of goods and services containing about 12,000 entries. When a trade mark application is filed, the applicant may indicate specific goods or services for which protection is sought or may use the class heading to identify the goods or services for which protection is sought. The scope of a trade mark registration, particularly the goods or services to which it extends, has for many years been open to debate. Many trade mark proprietors and registries have accepted that, if it is possible to obtain protection for a class heading, the rights extend to all goods or services in the respective class.
The Office for Harmonisation in the Internal Market (“OHIM”) has been responsible for registrations of trade marks extending to countries of the European Community and since 2003, followed a practice in which an application for a class heading of the Nice Classification is deemed to cover all goods or services in that class. The same considerations did not apply uniformly to all countries of the European Union (“EU”). Some EU national trade mark offices did not follow that practice. If an application is filed for a list of items in a class-heading, some countries considered that this covered only the specific goods or services listed.
The facts of the IP TRANSLATOR case
On 16 October 2009, CIPA applied to the United Kingdom Intellectual Property Office (“UKIPO”) to register the mark IP TRANSLATOR using the class 41 heading to identify the services covered by the application, namely “Education; providing of training; entertainment; sporting and cultural activities”.
Taking into account the application of EU Directives to national laws, the Registrar of Trade Marks interpreted that application in accordance with Communication 4/03 of the President of OHIM, which provides, inter alia, that:
“The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this, the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.”
The Registrar refused the application on the grounds that the application covered not only the services specified by CIPA but also every other service falling in class 41 of the Nice Classification, including “translation services”, for which the mark IP TRANSLATOR, lacked distinctiveness and was descriptive. On 25 February 2010, CIPA lodged an appeal against this decision to the Appointed Person, being a person appointed by the Lord Chancellor of the United Kingdom, on the basis that its application for registration did not specify and, therefore, did not cover translation services in class 41.
Prior to considering the matter the Appointed Person stayed the main proceedings and referred three questions to the ECJ. These are:
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 4/03...?
Having considered the matter the ECJ stated that the function of a trade mark is to serve as a guarantee to the consumer of the origin of the goods or services to which it relates. The extent of protection of a trade mark is determined by the nature and number of goods or services covered by the trade mark registration. In this regard, the purpose of entering a mark into the register is to ensure its accessibility to the competent authorities, the public and to economic operators.
The competent authorities must be aware of the nature of the mark, with clarity and precision, in order to fulfil their duties during examination of applications for registration and the publication and maintenance of an appropriate trade marks register.
Economic operators must be able to identify, with clarity and precision, the scope of the applications and registrations made by their competitors in order to obtain relevant information about the rights of third parties.
Accordingly, goods or services for which trade mark protection is sought should be identified with sufficient clarity and precision to enable competent authorities and economic operators to determine the extent of the protection sought on the basis of the register alone.
The Court stated that the class headings contained in the Nice Classification may be used when filing trade mark applications to identify the goods and services for which protection is sought. However, each specification of goods or services needs to be sufficiently clear and precise so that the competent authorities are able to determine the scope and protection of trade marks. The Court noted that some of the general indications in the class headings of the Nice Classification are sufficiently clear and precise, while others are too general and varied to be compatible with the trade mark’s function as an indication of origin. Therefore, it is for the competent authorities to determine on a case-by-case basis, according to the goods or services for which the applicant seeks protection conferred by a trade mark, whether or not those indications meet the requirements of clarity and precision.
The Court went on to state that, in order to respect the requirements of clarity and precision, a trade mark applicant who uses the general indications of a particular class heading of the Nice Classification to identify the goods or services for which protection is sought must specify if its application is intended to cover all the goods or services of the class included in the class heading or only some of them. If the applicant seeks protection for only some of the goods or services, they should be clearly specified.
The ECJ’s response to the three questions posed by the Appointed Person was, therefore that:
1) goods and services for which the protection of the trade mark is sought should be identified with sufficient clarity and precision in order to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark based on the list of goods or services alone;
2) the use of the general indications of class headings of the Nice Classification is not precluded provided that the goods or services for which protection is sought are sufficiently clear and precise; and
3) a trade mark applicant must specify with sufficient clarity and precision whether his application for registration is intended to cover all the goods or services of one class or only some of the goods or services. If the application concerns only some of the goods or services, they must be specified.
In essence, the ECJ, therefore, declared that OHIM’s practice under Communication 4/03 (“class-heading covers all”), although not always wrong, was unacceptable. If the general terms of a class heading are used, the applicant must specify, with sufficient clarity and precision, whether all or only some of the goods or services will be the subject of the mark as registered. OHIM responded immediately to this decision. The following day, it repealed Communication 4/03 and issued Communication 2/12, which appears to be in line with this judgement.
The South African Trade Marks Office currently accepts applications that cover the class headings and the full scope of protection in a resulting registration has not been specifically addressed by our Courts. However, it is likely that, should such a dispute arise, the South African courts will look to the ECJ’s judgement for guidance, especially since our Trade Marks Act has been modelled on European Trade Mark law. The decision, if it is followed, will not limit the scope of all trade mark registrations but may mean that some of them are more restricted than anticipated. We have yet to see the outcome here. Certainly, a reconsideration of class headings is needed in South Africa.
Written by Sajidha Gamieldien - Senior Associate, Trade Mark Prosecution, Adams & Adams
Verified by – Alan Smith, Partner, Trade Mark Litigation, Adams & Adams