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:

1. 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.
2. 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.

Originally set up in 2009 with National Head of Addleshaw Goddard’s Intellectual Property Group, Richard Kempner along with Andy Robinson, Jason Dainty and Stuart Jackson, the firm is re-branding to reflect its continued growth.

Meanwhile, Andy Robinson, is stepping down as a partner but will continue to work as a consultant to the firm.

Partner Richard Kempner said: “During our first 12 months we have doubled in size in terms of personnel as well as in the level of business we are attracting as a specialist intellectual property law firm. We expect that growth to continue over the next 12 months.”

Based in Leeds, Kempner & Partners specialises in intellectual property including patents, trade marks, copyright and designs, and is one of only a few law firms to offer a ‘one stop shop’ for trade marks, with a substantial trade mark filing capability. The firm already has several big name clients on its books including Centrica (British Gas and Dyno-Rod), Jet2.com, supermarket giant ASDA and the world’s largest chemical company, BASF among others.

The firm has also announced the appointment of Martin Delafaille as senior solicitor and trade mark attorney. Martin is one of only a handful of dual-qualified trade mark attorneys and solicitors in the UK. His appointment will bolster still further the firm’s capabilities as a one-stop shop for trade marks.

He joins the firm from Addleshaw Goddard where he was a managing associate in the IP team.

Mr Kempner said: “Martin brings a great deal of experience to the firm and joins us at an exciting time in our development. He is the firm’s fourth qualified recruit since we launched just over a year ago.”

He added: “The size and complexity of our latest instructions across all the sectors reflects Kempner & Partners’ reputation as one of the UK’s leading specialist intellectual property law firms. We don’t see many other firms out there with our expertise and track record, offering a partner-led, personal service at the same level as us.”

The firm’s expansion follows the increase in work from its key clients, including ASDA, Jet2.com, E-buyer, Innospec, JD Sports and Centrica. Since the beginning of 2010, Kempner & Partners has already received complex new patent infringement instructions from BASF.

Andy Robinson said: “As a specialist IP law firm we have seen massive growth in our first year but I now think it’s time for me to step back from the business and to concentrate on what I enjoy doing best which is supporting my loyal client base.

“While I will no longer have any direct role in the future strategy of Kempner & Partners I will continue to work with the team as we deliver the best possible advice on intellectual property law.”