When will the confusion over trade mark applications be solved?

Authors: Inga Lukauskienė, an Associated Partner, an Attorney-at-Law and a Patent Attorney in METIDA

On 19 June 2012, the Court of Justice of the European Union (the Court) issued the long-awaited decision in the ruling of the IP TRANSLATOR case regarding trade mark classification in applications. Intellectual property law experts were expecting a set of clear guidelines on the formulation of the lists of goods and services, and their reference to class headings. Alas, the Court decision lacked expected clarity.

The need for the clarification of guidance on classification and the specification of goods and services has emerged after an application was submitted to register the mark IP TRANSLATOR in class 41 headings. Class 41 covers a number of services, including translations, but this service is not indicated in the class heading. Therefore, a problem arose in assessing whether a trade mark registered for class 41 services corresponds to absolute requirements applicable to a trade mark, i.e. whether it is not descriptive of translation services. To some extent, the problem is attributable to the varying practice applied throughout the member states of the European Union (EU).

Although there is no direct reference of translation services in the class heading, the Intellectual Property Office of the United Kingdom rejected the registration of the mark on the grounds of failure to meet the requirements raised for the trade mark. The applicant objected to the arguments of rejection and turned to Court, seeking a clarification on the definition of the list of goods or services in the process of submitting an application. Naturally, a specific and clear decision was expected not only to allow for a legal assessment in a concrete case but also to offer a level playing field across all the member states of the EU.

Up to now, national institutions of EU member states followed different approaches on the scope of protection that class headings provided to goods or services. The practice in Lithuania implied that class headings also included an extended alphabetical list of a certain class of goods or services, while most of other member states, for instance, Germany, consider trade mark registration to protect exclusively the goods and services that are explicitly indicated in the list.

The use of class headings was convenient in those instances when there was no final determination on the trade mark applicant’s part regarding the scope of the use of respective goods, therefore, the indication of the class heading instead of specific goods or services allowed for the use of goods trade mark in a comparatively wide group of goods or services. All the goods and services are divided into 45 classes, thus one class covers a rather long list. Therefore, up to now, indication of a class heading did not require specifying concrete goods or services and helped saving a lot of time when preparing the applications.

The Court confirmed that when registering goods and services, applicants, in essence, may use international classification class headings to describe them provided that headings were sufficiently clear and precise. For instance, the general use of the title “clothing” is clear and precise enough, while the term “scientific apparatus and instruments” is not. The Court decision also points out that the national institutions of all the EU member states shall be subject to the unified approach regarding classification.

The Court decision on the newly-submitted registrations came into force as of 21 June 2012. The Communication that was issued by the Office for the Harmonisation in the Internal Market after the announcement of the Court judgement provides that any registrations submitted and granted before 21 June 2012 shall be assessed on the premise that when indicating the class heading, the applicant provided the entire alphabetical class list.

Therefore, the judgement offered even more questions than answers, and applicants who have the intention of applying for trade mark registration in the near future are advised to contemplate and assess the scope of corresponding goods or services in order to escape possible disputes in the future.

Special attention should be paid by the applicants for trade marks in the most popular classes No. 29, 30, 35 and 41, because they include different food products (class 29 and 30) and a variety of services (class 35 and 41). Perhaps the confusion could be eliminated by maintaining the possibility of registering a trade mark for the entire heading and separately noting that protection is sought for all the goods or services pertaining to the corresponding class. Currently, the Office for the Harmonisation in the Internal Market is putting efforts in order to implement such a practice but the protection of the entire class requires the provision of additional declaration to certify that. Decisions by the national goods trade mark institutions are yet to come.

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