Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks (‘IP Translator’)
The Chartered Institute of Patent Attorneys (CIPA) attempted to register ‘IP translator’ at the UK IPO for the standard Class 41 ‘heading’ relating to the provision of services for: ‘education: providing of training, entertainment, sporting and cultural activities.’ As a consequence, the Court of Justice of the European Union (COJ) have realigned the administrative demands placed on trade mark applications, and stated that the goods and services to which registration relates must be defined with sufficient clarity and precision.
The COJ decision follows the UK IPO’s interpretation of the application which fell in line with Communication No. 4/03 meaning that the registration would have extended to all services within that class, including translation services and not just those covered in the wording of the specification as filed.
Consequently, the application failed at the UK IPO for descriptiveness in relation to ‘translation services’ for which no evidence of ‘acquired distinctiveness’ had been submitted. CIPA then appealed basing their arguments on the fact that if they had intended to use the mark for ‘translation services’ it would have been included in their specification.
Three questions were then referred to the COJ allowing them to clarify the exact precision required in order to ascertain the goods or services concerned with Community Trademark applications. Furthermore, whether the general headings of classification can be used and whether all those goods or services can be protected.
On the 19 June 2012, the COJ opined that an applicant seeking to register a trade mark must be able to identify with clarity and precision those goods or services to which the application relates in order to allow those searching the register and the competent authorities whom search for prior registrations to determine the full nature of protection and the intentions of use within those classes.
By implication, it is not necessary for the goods or services to be identified with great detail although if the general indicators of the Nice classification are used, then it suffices to say that the applicant must be able to specify the goods or services to which the mark relates in order to uphold the smooth functioning of trade mark procedures and establish the boundaries of protection.
When general indictors are used by the applicant, they must specify whether they intend to use all the goods or services within that class or whether there are specific goods or services that shall be used. If the latter suffices, the applicant must identify exactly what they desire to be protected.
In sum, the decision imparts more clarity and predictability into the registration procedure by demanding that the applicant knows prior to registration what goods and/or services that the mark shall be used in relation to. As of the 21 June 2012, the decision has since been codified following the overhaul of OHIM Communication 4/03 with the replacement of Communication 2/12.
Clearly then general indicators for protection can be used provided they are clear and precise. The applicant must however be able to state whether they intend to use all the goods or services to which protection relates or just some of the goods or services that fall within that class.