The Ruling Of The Court Of Justice Of The European Union In 'IP Translator': More Questions Than Answers

On June 19, 2012, the Court of Justice of the European Union ("CJEU"), sitting as the Grand Chamber, delivered its long-awaited ruling in Case C-307/10 Chartered Institute of Patent Attorneys v. Registrar of Trade Marks (alias "IP TRANSLATOR"). The CJEU clarified the legal requirements regarding the manner in which trademark applicants in the European Union have to specify the goods or services for which they seek trademark registration. Some of the imminent follow-up questions still have to be answered.

Issue

Two essential elements of a trademark registration are the sign itself and the specification of the goods and services. Those elements together allow a precise identification and determine the extent of protection conferred by the registered trademark. The International Classification of Goods and Services (Nice Classification) provides a system of classifying goods and services into 45 classes (1–34 include goods, and 35–45 include services). The basis of the Nice Classification is the Paris Convention (Convention for the Protection of Industrial Property), signed in Paris on March 20, 1883; all Member States of the European Union are also Members of the Paris Convention. The Nice Classification lists each class with so-called class headings that include some general indications for each class and, in addition, provides for a detailed, alphabetical list of classified goods and services, which from time to time will be reviewed and amended.

With respect to the specification of the goods and services, some national trademark offices, on one side, and the Office for Harmonization in the Internal Market ("OHIM"), on the other, developed partly divergent practices leading to variable conditions for registration, contrary to the objectives pursued by the Directive 2008/95/EC, the so-called Trade Mark Directive, for a harmonized European trademark law.

According to the (now-changed) OHIM practice, if the general indications or the whole class headings provided in the Nice Classification are used, that constitutes a proper specification of goods and services in a Community trademark application. In consequence, the use of all general indications listed in the class heading of a particular class constitutes a claim to all the goods or services covered by this particular class. This practice is followed by the national offices in Bulgaria, Estonia, Finland, Hungary, Italy, Lithuania, and Romania.

However, other national Registries, e.g., the German Patent and Trademark Office ("DPMA"), favor a literal approach, i.e., the scope of protection of a registration and the scope of the claimed goods and services are construed according to their natural and usual meaning.

Procedural History

The reference for a preliminary ruling by the CJEU was made in the course of a dispute between the Chartered Institute of Patent Attorneys ("CIPA") and the UK Registry in respect of an application to register the designation "IP TRANSLATOR" in class 41 as a national UK trademark. In its application, CIPA used the general indications of the class headings for class 41 of the Nice Classification, namely "education; providing of training; entertainment; sporting and cultural activities."

The Registry refused the application, indicating that it covered not only services of the kind specified by CIPA, but also, because of OHIM's practice, every other service covered by class 41 of the Nice Classification, including translation services. For these latter services, the designation "IP TRANSLATOR" lacked, inter alia, distinctive character. As a side note, a similar problem may arise when assessing the...