The CJEU has handed down
its judgement in Case C-307/10 - generally referred to and known as the “IP
Translator” case - on 19 June 2012.
Discussions have arisen soon
thereafter on how the CJEU’s ruling has to be interpreted, notably in
connection with the CJEU's third answer relating to the "extent of protection resulting from the use of all the general
indications of a particular class heading” of the Nice Classification.
By the present letter, we would like to explain
interprets the judgement of the CJEU
and the reasons for our interpretation.
In fact, not only we consider that our
understanding would truly reflect a correct interpretation of the CJEU’s ruling,
but we also fully believe that this is the interpretation that best reflects
the interests of the brand owners, i.e. the users of the trademark registration
given by the CJEU in response to the questions referred to it are:
1. Directive 2008/95 must be interpreted as
meaning that it requires the goods and services for which the protection of the
trade mark is sought to be identified by the applicant with sufficient clarity and precision (emphasis added) to enable
the competent authorities and economic operators, on that basis alone (emphasis added), to determine the extent of
the protection conferred by the trade mark;
2. Directive 2008/95 must be interpreted as
meaning that it does not preclude the use of the general indications of the
class headings of the Nice Classification to identify the goods and services
for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise
3. An applicant for a national trade mark who
uses all the general indications of a particular class heading of the Nice Classification
to identify the goods or services for which protection of the trade mark is
sought must specify whether its application for registration is intended to
cover all the goods or services included in the alphabetical list of that class
or only some of those goods or services. If the application concerns only some
of those goods or services, the applicant is required to specify which of the
goods or services in that class are intended to be covered.
At a prima facie analysis, the above third answer
would seem to indicate that the CJEU would consider it acceptable that, if an
applicant wants to cover all goods or services of a particular class, the
applicant must simply recite all general indications of the respective class
heading along with a declaration that, by reciting the particular class
heading, the applicant intends to cover all those goods/services that (at the
time of filing) belong to the corresponding alphabetical list of that
looking at this answer more attentively, the CJEU does not say this. The CJEU merely
states that an applicant, who recites an entire class heading in the
specification, has to specify the goods or services if he does not wish that
all the goods or services of that class are otherwise meant to be covered. The
CJEU does not positively state in the third answer what the applicant has to do
when he really intends that all
the goods or services of that class are meant to be covered.
third answer must not be interpreted in a manner that would contradict the
first or second answer. Thus, if the third answer was interpreted to represent
that - by reciting all general indications of a class heading and by submitting
a declaration to the extent that with such recitation all goods or services of
that particular class are intended to be covered – such interpretation would not
obviously respect the condition as represented in first answer given by the
CJEU, namely that there must be a clear and precise identification of the goods
or services that would allow the competent authorities and any third parties to
determine the extent of protection conferred by the trade mark, especially in
those cases where the class heading terms are not literally covering all the
goods or services of that particular class (e.g. in class 41, any of the class
headings would not literally cover translation services). Accordingly, such an explanation
cannot be regarded as the right interpretation of the CJEU’s third answer, as it
would clearly contradict the CJEU’s first answer.
Hence, what is the right interpretation of the
The CJEU itself
gives express clarification in the very last paragraph of its judgement, by
63 Thus, in the case in the main proceedings, it
is for the referring court to determine whether, when it used all the general
indications of the heading of Class 41 of the Nice Classification, CIPA specified in its application whether or
not it covered all the services in that class and, in particular, whether or not its application was intended to cover
translation services (emphasis added).
according to the CJEU, the applicant has to “particularly specify in the application” the specific goods or
services that would have to be covered (in this case “translation services”) if
such coverage is not sufficiently clear and precise by making use of the
general indications of that particular class heading(s) alone.
MARQUES fully supports
the above mentioned explanation of the CJEU and strictly interprets the IP
Translator judgement according to the clarity and precision requirements,
because only such interpretation provides an explanation which does not
contradict the CJEU’s ruling in its first answer and also in its entirety. Moreover,
it would fully be in the interest of the brand owners, and we would like to remark
that it is the brand owners’ interest which should be warranted in interpreting
this ruling, as brand owners are the users of the registration trade mark
Why is the interpretation supported by MARQUES in the brand owners’ interest?
many reasons and among these, a very striking and explanatory reason takes its
justification from the following facts.
Many of the economic
operators who make use of the registration trade mark system and other related
tools are SMEs. In general, business people or managers, notably those running
SMEs, have little or even no focused knowledge of the Nice Classification
system but for the strict basics. When they are supposed to monitor the
registers and/or assess trade mark rights of either particular competitors or
any other third parties, they would simply avail themselves of the information as
obtained from the publication of trade mark applications or registrations in
the pertinent registers. If these users had to peruse any statements made in a
trade mark application or registration to the effect that all goods or services
of a particular class are intended to be covered (according to the alphabetical
list of that particular class), they would not reasonably understand the extent
of any such statement on that basis alone. Even in case they could understand
it, they would have to engage themselves into a burdensome process, in order to
retrieve the Nice Classification, assess its general aims and class scopes and
further find out what the alphabetical list of goods or services for that
particular class would actually include.
Based on the
fact that the Nice Classification has been subject to revision and update over
the years, if the trade mark concerned by the assessment was 20 or even only 5 years
old, they would have to know that account must be had to the alphabetical list in
force at that time. Supposed that it could be found, the entire list of terms
of that alphabetical list of goods or services ought to be carefully studied to
hopefully find out which the scope of protection of the trade mark for that
particular class would actually be. As a trade mark application or registration
may cover more than one class, the same exercise ought to be equally repeated
for any other of the classes that were identified in that application or registration
in the same or similar indefinite ways. It is self evident that this is not
something that users, in particular SMEs, can afford for or work with. To the
extent that users cannot work with such a practice, the system would not
provide the legal certainty and consistency that it is expected and supposed to
warrant. Moreover, such a practice would clearly conflict with the CJEU’s ruling
in its first answer (“…with sufficient clarity and precision … on that basis
alone”), as set out above.
Is there any way to cover in a specification of
goods and services all the goods or services of a particular class in a clear
and precise manner?
answering this question, it should be considered whether and to which extent there
is any need for an applicant to cover all the goods or services of a particular
class of the Nice Classification. In fact, it is MARQUES’ opinion that applicants
should be encouraged to specify in the list of goods and services only those
particular goods or services in which they are really interested and that would
ensure appropriate coverage of any reasonable future developments of their
business including possible future developments, rather than attempt to cover
an entire class irrespective of its specific contents and any fair need.
In this frame,
appreciates the initiative put forward by the OHIM under the Convergence
Programme with a view to harmonise the practices of Classification and the use
of Class Headings, on the grounds of a set of principles for a new common
practice based on the so-called Taxonomy.
provides a hierarchical structure of basically all goods and services of the
Nice Classification with the most specific terms defined at the bottom and the
most general terms identified at the top of the hierarchy. Applicants can make
use of these general terms, whenever broad coverage is needed.
is expected to be implemented by the end of this year. On the basis of the
Taxonomy, applicants will even be able to select and make use of identified
groups of terms of the hierarchy (the groups of terms defining so-called “class
scopes”) that are acceptable for classification purposes and will ensure a
comprehensive coverage of the goods or services that would fall within a
particular class of the Nice Classification.
MARQUES would not in
principle object to the adoption of the Taxonomy for the purpose of harmonising
the classification system, to the extent that the groups of terms defining the
class scopes under the Taxonomy are intended to meet the requirements of
clarity and precision as now referred to in the CJEU’s ruling in the IP
Translator case and so far that it is made clear that those groups of terms defining
class scopes should only be used if and to the extent that broad protection is
really needed, e.g. by those economic operators who actually provide
diversified goods or services.
However, as a
rule and in the general interest of all users, MARQUES maintains its view that
applicants should always specify the goods and services in a manner as would be
required to make it possible to establish which goods or services the
application is intended to cover.
above circumstances, MARQUES would encourage all national offices not
to adopt any other different approach, notably any other approach that would contradict
the CJEU’s ruling in the IP Translator case.
we would like to remark that the CJEU’s ruling in the IP Translator case does
not address the question of how the scope of protection of already registered
trade marks ought to be interpreted, in cases where those trade mark
registrations make use of class headings. As this is an entirely different matter,
we do not intend to address the same here.