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Class Headings, Clarity and Precision

Class Headings, Clarity and Precision

02/12/11

At present, OHIM’s policy has been to interpret a specification of goods/services comprised of a class heading as providing protection for all of the goods/services in that class, regardless of the fact that they may be absent from the class heading. This approach has been widely criticised as lacking clarity.

In order to obtain guidance, and have the basis for such an approach fully considered, CIPA applied to register a specially selected mark IP TRANSLATOR in the UK for “education; providing of training; entertainment; sporting and cultural activities” in Class 41. This is the class heading for Class 41 and it does not specifically refer to “translation services”, which also fall within Class 41.

Although the UK Registry’s practice was not to follow OHIM’s approach, it agreed that clarification would be appropriate and so interpreted the application as covering all services in the class. On this basis it refused the application as being descriptive of “translation services”. 

CIPA appealed the Hearing Officer’s decision to the Appointed Person arguing that use of the class heading did not include “translation services” and that they had not intended to include “translation services” so there was no basis for the descriptiveness objection. This allowed the Appointed Person to request a preliminary ruling from the Court of Justice.

In his recently delivered opinion in response, Advocate General Bot proposes that the Court of Justice provides the following guidance to the Appointed Person:

 

  • The identification of goods/services for which the applicant seeks protection must satisfy requirements of clarity and precision (in accordance with the Court of Justice decision on graphical representation in Sieckmann C-273/00)

 

  • The goods/services may be identified by a specific list or by reference to the basic goods and services as long as they enable the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned

 

  • The use of class headings to identify goods or services is not precluded provided that the requirements of clarity and precision are satisfied, which is to be determined on a case by case basis

 

  • However, OHIM’s current view that identification of goods/services using any of the class headings constitutes a claim to all goods/services falling within that class does not serve to guarantee the requirement for clarity and precision

Going forward, and assuming that the ECJ follows Advocate General Bot’s opinion, existing CTM registrations claiming class headings may need to be re-filed to protect specific goods of interest (although many will lobby for existing registrations to be amended to reflect the new approach), current UKIPO policy on class headings will remain unchanged; and greater precision should be employed when drafting trade mark specifications.