Tuesday 19 June 2012

Darren Olivier

Classification guidance from the ECJ - IP Translator

An important case just published today on the use of class headings in Europe can be located here – IPTranslator

The case was instigated by the Chartered Institute of Patent Attorneys in the UK when their mark IP TRANSLATOR was rejected because their class heading (41) spec was deemed to cover all services in the class which included “translation services”.

Questions over the interpretation of the Nice Classification were referred to the ECJ and observations were made by over 10 governments as well as the EU Commission and OHIM. It is of significant importance in Europe because OHIM’s practice to allow class headings was inconsistent with the practice of some Member States.

The ruling by a Court of 12!  (CIPC would love that type of attention right now)
1.      Goods and services for which the protection of the trade mark 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 conferred by the trade mark.
2.      Class headings are allowed provided that such identification is sufficiently clear and precise.
3.      Where class headings are used they must specify whether it 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.
The decision is unlikely to affect RSA specifications except perhaps those where priority is claimed from marks filed in Europe because partial priority is not allowed here, and expressions such as “all goods in the class” (if contemplated by 3. above) may not be acceptable. For RSA filers into Europe, if we apply our own test we should be fine. For the rest of Africa, the ECJ analysis provides a good explanation on interpretation of the Nice Classification and also how it works within the context of an EU wide directive(s).

Darren Olivier

Darren Olivier

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19 June 2012 at 18:42 delete

Link to the case wouldn't work for me, but this one does: http://curia.europa.eu/juris/document/document.jsf?text=&docid=124102&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=4020201

or http://is.gd/kEplOT

20 June 2012 at 08:54 delete

thanks Charles, I have amended the link.