A recent referral by the Appointed Person to the Court of Justice could lead to significant changes in the way that the goods and services specified in trade mark registrations are interpreted throughout the EU.
This could, in particular, have important consequences for owners of Community Trade Marks (CTMs), some of whom have traditionally sought protection by claiming for a “class heading” rather than identifying specific goods or services.
We would recommend that owners review and make changes to their CTM specification now (if this is possible, see below) rather than wait before the Court of Justice hands down its decision, so that the goods and services covered by their CTMs are clearly identified.
Background
Throughout most of the world, goods and services protected by trade mark rights are classified according to the Nice system, which divides all goods and services into 45 classes. Each of the 45 classes of goods and services has a general description of the goods and services in that class, which is known as the “class heading”. The class heading describes many of the goods/services in a class, but not all of them.
For example, the class heading for class 35 is “Advertising; business management; business administration; office functions“. Class 35 also includes “public relations” and “retail services“, which although not part of the class heading still properly fall within class 35.
In the EU, class headings have been interpreted in one of two ways:
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At OHIM (and a minority of national registries) the class heading has been treated as a claim for all goods or services in that particular class. Therefore, a specification that captures the class heading of “Advertising; business management; business administration; office functions” is treated as covering “retail services” and all other services in class 35.
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Most other national registries, including the UK, adopt the view that trade marks are monopolistic rights and there must be certainty in what goods and services are protected. Claims made for a class heading will be literally construed, which means that a claim for “Advertising; business management; business administration; office functions” will only protect those particular services, and not “retail services” or “public relations”.
Referral to the Court of Justice
In proceedings relating to UK trade mark application IP TRANSLATOR, which had been filed by the Chartered Institute of Patent Attorneys, Geoffry Hobbs QC sitting as the Appointed Person has referred questions to the Court of Justice for clarification on whether it is permissible for trade mark applications to use class headings to identify the goods and services covered by that application, and also whether OHIM’s practice (as described above) is acceptable.
Possible consequences
If the Court of Justice decides that class headings cannot cover all goods or services in that class and that OHIM’s current practice is therefore untenable, it would be too late to then seek to amend existing registrations as this would be regarded as an attempt to broaden the scope of the specification – which is not permitted under the CTM Regulation.
CTM owners could therefore find themselves in a position where their existing CTMs do not adequately protect them, and the only option available would be to file new CTM applications, which could then be subject to either official objections or third party oppositions.
Although it is unlikely that the Court of Justice will hand down its decision until at least the end of this year, brand owners should nevertheless review their CTM specifications now, to ensure that they accurately reflect the goods and services in relation to which the mark is used. If they do not, brand owners may not only find themselves unable to enforce their trade marks against infringers. A consequence could also be that their valuable trade mark registrations will be vulnerable to revocation on the grounds of non-use.
For further information, please contact Jason Dainty or Martin Delafaille.
Tags: brand, community trade mark, IP Translator, Nice classes, trade marks