The ECJ will rule at last on the legality of OHIM's class heading practice, following a recent reference from the Appointed Person in a case involving the mark IP TRANSLATOR (O-215-10). In the reference, the Court has been asked to rule on the degree of clarity and precision required in specifications of goods and services and whether it is necessary or permissible for class headings to be construed as covering all goods or services in a class.
Setting the Scene
The background to and problems with OHIM's approach to class headings have been summarised in past issues of Make Your Mark.
Briefly, OHIM's practice, begun in 2003, of regarding claims to class headings as covering all goods and services in a class has long been controversial. There has been only patchy acceptance of the approach across the EU national offices, some of which follow it, and some of which do not. Many critics see the "class heading covers all goods" approach as creating substantial legal uncertainty as to the extent of CTM rights, since many class headings are expressed in very general wording which would not, on a normal reading, even implicitly cover some of the goods and services regarded as falling in that class. Moreover, many are sceptical as to the likelihood of national courts interpreting specifications in line with OHIM's practice.
Discontent with the practice has been simmering in various quarters, and has bubbled to the surface from time to time in, inter alia, judicial comments on the undesirability of the current uneven approach across the EU to the interpretation of class headings.
The current reference arose from a UK application filed by The Chartered Institute of Patent Attorneys for the mark IP TRANSLATOR. The application was for the Class 41 class heading, namely "Education; providing of training; entertainment; sporting and cultural activities".
The UK-IPO regards itself as bound by OHIM's practice on class headings for the purposes of examination. Consequently, it objected that the mark was descriptive of translation services because these fall within Class 41, even though they do not clearly fall within the scope of any items in the class heading. The examiner therefore objected that the mark was both descriptive and non-distinctive. CIPA argued that translation services were not covered by the specification as claimed, and appealed the refusal of the application to the Appointed Person.
By agreement of CIPA and the UK-IPO, the Appointed Person referred to the ECJ questions on the proper interpretation of class headings, and the extent of clarity and precision required in specifications.
Terms of Reference
In the reference, the Appointed Person noted that if OHIM's approach were right, then CIPA's claim to the class heading of Class 41 meant that despite claiming just four broad terms, the specification in fact covered all of the 167 items listed in Class 41 in the current edition of the Nice Classification; all of the more than 2,000 listings for Class 41 services in the UK-IPO's trademark classification index; and all of the more than 3,000 Class 41 services listed in OHIM's own EUROACE database. Many of those services, including translation services, could not even be inferred from the broad terms in the class heading itself.
The Appointed Person further noted that the permitted lack of clarity in specifications under OHIM's practice was in sharp contrast to the requirements for clarity and precision in identifying trademarks following the ECJ's judgment in Sieckmann (C-273/00).
Moreover, this permitted lack of clarity in specifications sat uncomfortably with the ECJ's judgment in Praktiker Bau- und Heimwerkermärkte AG (C-418/02), which required retail services applications to specify the particular goods or type of goods being retailed. Under OHIM's approach, a claim to the Class 35 class heading, which does not mention retail services, would be regarded as covering retail services even though it did not comply with the requirements in Praktiker. That, it seemed, could not be right.
Moreover, OHIM's practice did not sit well with the need for examining IPOs and courts handling enforcement actions to understand the terms covered by an application or registration in deciding conflicts between marks, or whether marks were sufficiently distinctive for registration in respect of the goods or services claimed.
The Appointed Person noted the uneven approach to specification interpretation across Europe. Whereas the Directive was not intended to harmonise procedure, the interpretation of specifications was a matter of substantive law, since it determined the scope of the monopoly granted. For all these reasons, the Appointed Person asked the ECJ to give guidance on:
(1) whether it is necessary to identify goods and services with clarity and precision and, if so, with what degree thereof;
(2) whether it is permissible to use the general wording of a class heading for specifications; and
(3) whether it is necessary or permissible to construe class headings as covering all goods or services in a class.
This reference has been long-awaited, and the outcome is likely to have a substantial impact on practice before OHIM and the EU national offices.
If the Court rules that OHIM's practice is unlawful, OHIM will certainly change it for applications going forward. What will become, however, of the countless applications accepted since 2003 by OHIM and some of the national offices, filed by applicants for class headings in reliance on OHIM's published practice that such applications covered all goods and services in a class? They may find that their specifications are not as broad as they believed, and may not even cover all the goods and services of actual commercial interest.
OHIM could allow a term within which the owners of such rights could specify the goods or services clearly, and therefore retain them; failing which they would retain protection only for the specific goods and services claimed, which would arguably protect the legitimate interests and expectations of those registrants. However, depending on the number of CTMs claiming protection for the class heading, such a task could be huge, taking into account the number of CTMs granted since 2003.
Even so, allowing registrants to "clarify" their specifications by adding goods or services after registration if OHIM's practice is struck down would arguably amount to an impermissible broadening of those specifications after filing, since it would be clear that in a legal sense, those goods and services never formed part of the original claim. The problem is quite intractable, which accounts in large part for OHIM's reluctance to modify its practice in the absence of an ECJ ruling effectively directing it to do so.
It is likely to be many months before the ECJ issues a pronouncement on this issue. Meanwhile, those applying for protection before OHIM or any national offices are best advised to err on the side of caution: say it if you mean it, or you may be deemed to have left it out.