Europe drew one step closer to certainty on class headings in December, when the Advocate General issued an opinion in the IP TRANSLATOR case (C-307/10; background summarised in Make Your Mark, Autumn 2010). When the ECJ rules in a few months, OHIM and CTM owners alike will know whether OHIM’s practice of treating class headings as covering all goods or services in a class can stand. All indications are that it will not.
The Advocate General’s opinion addressed the issues referred to the Court, namely the degree of clarity and precision required in specifications and whether it is 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.
(We do not normally cover Advocate General opinions in detail in these pages, since they are normally soon superseded by ECJ rulings, whose conclusions and reasoning may differ. However, owing to the importance of the issue in this case, we are publishing this short summary of the Advocate General’s conclusions while the Court’s decision is awaited. – Ed.)
To no one’s surprise, the Advocate General considered that a common approach to the construction of CTM and EU national specifications was essential, since the national and CTM systems interact on multiple levels, not least in relation to matters like seniority and enforcement.
To ensure this, it was necessary to precisely define the requirements for the identification of goods and services, which should apply equally to CTMs and national marks. This was fundamental, since without a clear understanding of the goods or services covered by a mark neither OHIM nor the responsible national authorities could conduct a full and 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. To overcome these problems, applicants must identify goods and services clearly and precisely, using wording that is both intelligible and unambiguous. Just what "clear and precise" meant, however, was another matter. Applicants could, for example, be required to list every single item for which protection was sought, but the Advocate General thought this would be imposing too great a burden and would run the risk that applicants would have to re-file whenever commercial interests developed slightly in ways not precisely foreseen at the time an application was filed. His preferred approach was to allow applicants also to identify goods and services by reference to general, category-specific terms. For example, a claim to protection in respect of "candles" would cover all types of candles including dining candles, church candles, etc., without having to list each individual type. The level of specificity actually required would depend on the goods and services and had to be assessed on a case-by-case basis, but, in general, category indicators could, in the Advocate General’s view, define goods clearly and precisely, provided they were in themselves intelligible and unambiguous.
This is where OHIM’s practice began to fall down, in the Advocate General’s view. It was acceptable in his opinion to claim protection for general indications appearing within the class headings of the Nice Classification, if those general indications met the requirements of precision and clarity. The trouble was, many of those general indications did not. Many were, on the contrary, vague, imprecise and overly general, such as inter alia the heading of Class 45, "personal and social services rendered by others to meet the needs of individuals". OHIM’s automatic acceptance of all class headings was fundamentally incompatible with the need to examine registrability and assess conflicts on the basis of the precise goods and services for which protection was sought or had been granted.
The Advocate General regarded OHIM’s practice of construing class headings as covering all goods or services in the class, moreover, as essentially allowing applicants unfettered exclusive rights that were by no means foreshadowed by the wording of the class heading claimed. The Class 45 heading, mentioned above, was the most notorious example of this, since the wide and varied nature of the miscellaneous services covered are by no means fully indicated by the class heading. As a result, OHIM’s practice would inevitably lead to a rise in the number of legal conflicts between marks and distorted competition in the common market.
The Advocate General therefore recommended that the Court rule that the "class headings cover all goods" approach does not meet the requirements for clarity and precision in the identification of goods and services for which either CTM or national trademark protection is sought.
The ECJ normally follows the Advocate General, and the writing therefore now seems to be on the wall for OHIM and the handful of member states that have followed it in construing class headings as covering all goods or services in a class.
Given the politically charged nature of this issue, many expect the ECJ’s ruling to follow relatively soon. Brand owners who are not already drafting specifications for new marks in line with the Advocate General’s guidelines on clarity and precision should start doing so now. Serious questions, though, remain about the effect of registrations granted for class headings since 2003 in reliance on OHIM’s published practice and in response to the Office’s active efforts to reduce translation costs and administration by wooing users to file applications claiming standard class headings.
The ECJ’s awaited decision may not answer those questions, but it will at least confirm whether they do indeed (as is suspected) need to be addressed. Meanwhile, proactive brand owners will already be considering whether their portfolios of marks including class headings does indeed provide the full measure of protection they need.