Our last issue hailed the forthcoming Court of Justice decision in IP TRANSLATOR as promising "certainty on class headings" (Make Your Mark, Spring 2012). We hope it is not often we have to eat such humble pie. The judgment, handed down in June, disappointed observers and brand owners alike by sidestepping the chance to require applicants to fully specify the goods and services claimed under CTMs and national marks (Chartered Institute of Patent Attorneys v Registrar of Trade Marks, C-307/10).
Instead of propelling Europe toward greater clarity and accessibility on the scope of registered trademark rights, the Court's finessed reasoning has allowed OHIM to apply a patch and essentially retain its existing "class headings cover all goods/services" practice. The missed opportunity here is palpable, and regrettable.
Part of the Solution?
We reported the background in full in our Spring 2012 issue, but in brief, the CJEU was asked to consider the degree of clarity and precision required in specifications and whether it was necessary or permissible for class headings to be construed as covering all goods or services in a class. OHIM, since 2003, has followed that approach; most national offices and courts that enforce CTM rights within the EU do not.
In the opinion issued earlier this year, the Advocate General considered that a common approach to the construction of specifications by OHIM and the national offices and courts was essential, since the national and CTM systems interact on multiple levels, not least in relation to enforcement.
In its recent and eagerly-awaited judgment, the CJEU agreed with this. It also supported the Advocate-General's view that it was essential for applicants to state clearly and precisely the goods and services for which protection was sought, since without a clear understanding of the goods or services covered by a mark neither OHIM nor national authorities could undertake a proper examination under absolute grounds or assess the validity of a claim in opposition, invalidity or revocation. Nor would third parties be able to get a clear understanding of the extent of existing rights.
In the view of the Court, many terms within the Nice class headings would meet the requirements for clarity and precision, but others might not. (The Court gave no examples, but the heading of Class 45, "personal and social services rendered by others to meet the needs of individuals", is commonly cited as a case in point.) Where terms within class headings are vague or ambiguous, it was incumbent on applicants to define the goods or services by means of clear and precise terms.
So far, so uncontroversial. Here, however, the Court began to peel away from the Advocate-General's tight reasoning. It did not answer the third question referred to it, namely whether it was necessary or permissible for class headings to be interpreted as covering all goods or services in the class, in accordance with OHIM's practice since 2003. Rather, it posed and answered a different question, which was essentially, how may an applicant who claims a general class heading secure protection thereby for all goods or services in a class.
Here, the Court held that the dominant factor in construing specifications must be the "actual intention of the applicant". Consequently, applicants who claimed a class heading but who indicated that, in so doing, they meant to cover all the goods and services in the alphabetical list of the relevant Nice class, would be regarded as having claimed protection for all the goods or services in that list (essentially, therefore, as near as it was possible to get to all goods or services in the class).
Applicants who claimed class headings but did not intend to cover all the goods or services in the corresponding alphabetical list must indicate which goods or services they intended to cover. If no indication was given, the specification would be construed as covering only goods or services expressly mentioned or naturally falling within the meaning of broad terms within the class heading.
Or Part of the Problem?
Within 24 hours of this judgment, OHIM released Presidential Communication No. 2/12, setting out its new practice going forward.
The Office seized on the centrality of intention within the Court's judgment and decreed that it would still continue to accept applications for class headings, but that applicants who intended thereby to cover all goods or services in the corresponding alphabetical list should expressly indicate that at the time of filing. Initially the Office uploaded a PDF declaration onto its website, which applicants could use to confirm this intent, and later followed up by rolling out a new tick-box on the application form itself.
Notably, there is no corresponding declaration or tick-box for applicants who claim a class heading but intend to cover only certain goods or services within the alphabetical list that are not mentioned within the class heading, but not all the goods or services in the alphabetical list. The declaration and tick-box are very much an "all or nothing" affair, and the onus is on applicants to make their intentions clear. How this should be done is a murky question, though, if not by the addition of terms from the alphabetical list to the specification itself.
The Court's focus on "intention" rather than on the words of specifications has also allowed OHIM to finesse the politically charged question of existing class heading registrations and applications. Under the new practice, OHIM will simply deem them to cover all goods or services in the class, except where the applicant indicated at filing that this was not its intent. Of course, such indications must have been few and far between, if they were ever given at all.
Many, sceptical of the legality of OHIM's practice, have always claimed class headings in conjunction with specific items of interest where those were not clearly encompassed by the general terms in the heading. Would this amount to an indication that the applicant did not intend to cover all goods or services in the alphabetical list? Frankly, and unsatisfactorily, no one knows.
The Court's decision in IP TRANSLATOR is a patch, not a fix, and even as a patch its edges are already frayed.
Instead of confining itself to answering the legal questions posed, the Court essentially manoeuvred the case into a means for delivering a political solution to the political problem created by OHIM's specification practice. Cynics might be forgiven for thinking that this was the Court's intent all along. The truth is probably that the Court felt it had no choice but to head off the potentially catastrophic consequences of ruling that thousands of CTM registrations and applications filed since 2003 did not enjoy the scope of protection that OHIM had led their owners to believe.
However understandable the Court's own intentions, however, its ruling creates more problems than it solves. Those filing CTM applications will be advised to continue to rely on class headings and to tick the box. National offices may also follow suit, but the existence of such interpretive practices may not be clear to those from outside searching national registers. It is not even clear at this stage how to determine from the CTM Register whether a declaration has been filed or the box ticked to indicate an intent to cover all goods or services in an alphabetical list.
The impact on searching and infringement advice cannot be understated. Those searching and clearing new marks will have to continue to assume that CTMs covering class headings cover all goods or services in the class, but with a new twist, namely that, for applications filed from 21 June 2012, it will be necessary to check whether a declaration has been filed or a box on the application form ticked, before the scope of protection can be determined.
While the tone of this commentary may sound harsh, the Court's paeans to the importance of "clarity and precision" in specifications comes across to many as mere lip-service. The fact is that third parties consulting the CTM Register, particularly those who are not advised by specialists in the trademark field, may not be able to immediately tell that a declaration has been filed or a box on the application form ticked that dramatically expands the scope of protection beyond the goods and services actually claimed, and may not have easy access to the alphabetical list of goods and services in the relevant Nice classes, in any event. The Court referred approvingly to case law on graphic representation, but such law requires not only clarity and precision, but also that a sign be self-contained. Specifications that require those looking at a register to consult another document to work out the scope of protection are hardly self-contained; this is a concept that the Court could helpfully have considered.
So, the outcome in IP TRANSLATOR has proved rather less than the welcome clarification of the law for which many had hoped. This fundamental issue is unlikely to go away and may well find its way back to the Court before long. In the meantime, brand owners in the EU will have to wait for the legal certainty that should underpin any system of monopoly rights. This is regrettable, indeed.