Brussels, 20/06/2012 (Agence Europe) - The goods and services for which the protection of a trademark is sought must be identified by the applicant with sufficient clarity and precision to allow the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark. That is the substance of the ruling handed down by the Court of Justice of the EU (Case C-307/10) responding to a request from the High Court of Justice of England and Wales for interpretation of the European directive (2008/95/EC) on approximation of the laws of the member states relating to trademarks.
The Chartered Institute of Patent Attorneys (CIPA), the association of lawyers specialising in intellectual property in the United Kingdom, had its application to register the designation “IP TRANSLATOR” as a national trademark. To identify the services covered by that registration, CIPA used the general terms of the heading of Class 41 of the Nice Classification (Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks), that is, “Education; providing of training; entertainment; sporting and cultural activities”. The Registrar of Trade Marks refused the application, concluding that the application covered “not only services of the kind specified by CIPA, but also every other service falling within that class of the Nice Classification, including translation services”, though these services were not included in the application for a trade mark. Accordingly, the Registrar argued, for these latter services, the designation IP TRANSLATOR lacked distinctive character and was descriptive in nature. Moreover, there had been no request by CIPA for such services to be excluded from its trademark application. CIPA appealed against that decision, contending that its application for registration did not specify, and therefore did not cover, translation services. The High Court of Justice, hearing the case, has asked the Court of Justice to clarify the requirement of clarity and precision for the identification of the goods and services for which the protection of the trademark is sought and whether it is possible to use, for that purpose, the general indications of the class headings of the Nice Classification.
In its ruling, the Court says, firstly, that the Trademark Directive 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 to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought”.
Secondly, the Court holds that the directive does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trademark is sought. However, “such identification must be sufficiently clear and precise” to allow the competent authorities and economic operators to determine the scope of the protection sought. In that connection, the Court observes that some of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise, while others are too general and cover goods or services which are too varied to be compatible with the trademark's function as an indication of origin. Accordingly, it is for the competent authorities to make an assessment on a case-by-case basis.
Finally, if, as in this particular case, an applicant for a national trademark uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trademark is sought, the applicant must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered. (FG/transl.rt)