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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
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Gino Van Roeyen
Markku Tuominen
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Stefan Schröter
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Yvonne Onomor
WEDNESDAY, 30 NOVEMBER 2011
IP TRANSLATOR: the Advocate General's Opinion
In Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Advocate General Bot delivered an opinion yesterday on the vexed question, referred to the Court of Justice of the European Union for a preliminary ruling, of whether a trade mark application that designates a Nice class heading for the goods or services for which registration is sought will only be considered in relation to the goods and services named in the class heading, or whether the application must be considered in relation to all the goods or services in that class.  In this case the applicant sought to register the words IP TRANSLATOR for "education; providing of training; entertainment; sporting and cultural activities" -- the heading for services in Class 41. The application was refused because the words IP TRANSLATOR were descriptive in respect of translation services which fell within Class 41, even though the applicant had not designated translation services. According to the Advocate General, the Court of Justice should be advised to rule as follows:

"(1) (a) Directive 2008/95 ... to approximate the laws of the Member States relating to trade marks and Council Regulation ... 207/2009 ... on the Community trade mark are to be interpreted as meaning that the identification of the goods or services for which the applicant seeks protection must satisfy requirements of clarity and precision which are sufficient to enable the competent authorities and the economic operators to determine accurately the scope of the protection conferred by the trade mark.

(b) Those requirements may be satisfied by a specific list of each of the goods and services for which the applicant seeks protection. They may also be fulfilled by identification of the basic goods or services enabling the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned. 

(2) Directive 2008/95 and Regulation No 207/2009 are to be interpreted as not precluding the applicant from identifying the goods or services for which he seeks protection by using the general indications of the class headings of the common classification of goods and services for which a mark is registered, provided that that identification satisfies the necessary requirements of clarity and precision. 

(3) Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade marks and designs) (OHIM) of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, by which the President indicates that OHIM does not object to the use of any of the general indications and class headings as being too vague or indefinite and that the use of those indications constitutes a claim to all the goods or services falling within the class concerned, does not guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether a national or a Community trade mark".

The court's ruling is usually given within six months of the Advocate General's Opinion. The court is not bound by the opinion but will accept it around 80% of the time. 
Posted by: Blog Administrator @ 11.16
Tags: ECJ reference, advocate general's opinion, Nice classification,
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