21st September, 2012
Answering a reference on use of class headings of the Nice Classification for registration of trade marks, the CJEU stated that the use of general indications of class headings referred to in Article 1 of the Nice Agreement is not precluded by Directive 2008/95, if it is sufficiently clear and precise. It also said that an applicant for a national trade mark who uses all the general indications of a particular class heading must specify which of the goods or services in that class are intended to be covered.
The Registrar of Trademarks (UK) had refused to register ‘IP Translator’ under Class 41 covering services relating to education, training, entertainment, sporting and cultural activities. It held that the word sign ‘IP Translator’ covered not only services of the kind specified by applicant (The Chartered Institute of Patent Attorneys – CIPA), but also every other service falling within Class 41 of the Nice Classification, including translation services. In respective of translation services, ‘Translator’ was descriptive and had not acquired any distinctive character on date of application. However including all itemisations under a class heading – even those not applied for – would make it difficult for economic operators, public and authorities themselves to identify what is covered by a trademark.
The national court will shortly decide on the registration of ‘IP Translator’. Meanwhile the OHIM has issued Communication 2/12 according to which applicants for Community Trade Mark relying on class headings have to declare that they intend the application to cover all goods or services in the alphabetical list for the class.
Answering a reference on use of class headings of the Nice Classification for registration of trade marks, the CJEU stated that the use of general indications of class headings referred to in Article 1 of the Nice Agreement is not precluded by Directive 2008/95, if it is sufficiently clear and precise. It also said that an applicant for a national trade mark who uses all the general indications of a particular class heading must specify which of the goods or services in that class are intended to be covered.
The Registrar of Trademarks (UK) had refused to register ‘IP Translator’ under Class 41 covering services relating to education, training, entertainment, sporting and cultural activities. It held that the word sign ‘IP Translator’ covered not only services of the kind specified by applicant (The Chartered Institute of Patent Attorneys – CIPA), but also every other service falling within Class 41 of the Nice Classification, including translation services. In respective of translation services, ‘Translator’ was descriptive and had not acquired any distinctive character on date of application. However including all itemisations under a class heading – even those not applied for – would make it difficult for economic operators, public and authorities themselves to identify what is covered by a trademark.
The national court will shortly decide on the registration of ‘IP Translator’. Meanwhile the OHIM has issued Communication 2/12 according to which applicants for Community Trade Mark relying on class headings have to declare that they intend the application to cover all goods or services in the alphabetical list for the class.