Australia: Trade marks in the EU - what Australian businesses need to know after IP Translator

Australian businesses trading or intending to trade in EU markets should carefully review their trademark protection strategy in light of the recent ruling by the EU's Court of Justice.

The Court of Justice of the European Union (CJ) provided guidance on the scope of trade mark protection in the EU when it handed down its much-anticipated decision in IP Translator on 19 June 2012.

It was expected that the CJ would use the reference to abolish the "class heading covers all" approach to trade mark specifications. These ambit claims across entire classes of goods and services provide extremely broad protection and make it more difficult to clear new brands in EU markets.

Instead, the CJ has allowed for Community Trade Marks (CTM) applicants to continue claiming class heading protection, and has left the matter of interpretation of specific class heading and general indication claims to be decided on a case-by-case basis. Further, following the decision, the CTM Office (OHIM) has announced that it will work with EU national offices towards adopting a common practice on the interpretation of the general indications within class headings.

For Australian business with an interest in EU markets, the decision calls for precision and clarity in the drafting of trade mark specifications, while at the same time allowing for class heading claims for CTMs. This calls for a mixed drafting style, in which it may be prudent to adopt a "class heading plus specific goods/services" approach when filing a CTM (and perhaps also when an initial Australian trade mark application is made, if it is to be the base for an International Registration designating the CTM system).

Background

Trade mark protection essentially revolves around two key factors: the sign for which registration is sought, and the specification of goods and services.

Under the Nice Agreement there are 45 classes into which goods and services are categorised. Each class has a "class heading" which describes the types of goods and services included in that class.

Understandably, class headings can not be exhaustive lists and there are many goods and services covered by trademark applications and registrations that are not identified in a class heading. "Sleeping bags", for example are covered in class 20 of the Nice Agreement but are not mentioned in the heading which reads "furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics".

In the IP Translator application, the particular service in question was "translation services" (classified in class 41). Under the "class headings covers all approach", adopted by the EU's Community Trade Marks Office (OHIM), a specification covering the class heading "education; providing of training; entertainment; sporting and cultural activities" would cover "translation services".

In contrast, the UK and some other national registries favour the "means what it says" approach. Under this framework translation services would not be covered within the class 41 specification as the phrase is not included in the class heading.

The difference is illustrated in the table below:

In the IP Translator decision the CJ was asked to rule on the validity of the "class heading covers all" approach, as opposed to a "means what it says" approach. This was a test case brought by the UKIPO, which - using the "class heading covers all" approach adopted by OHIM - raised an objection against a UK trade mark application for IP TRANSLATOR on the basis that the mark was descriptive and lacked distinctiveness for "translation services".

The decision

It was thought the CJ would use the IP translator reference as an opportunity to abolish the "class heading covers all" approach. Among other things, the approach is criticised for providing rights that are too broad and for lacking certainty and transparency.

However, the decision of the CJ has allowed for applicants to continue to claim class headings.

The proviso is a call for precision and clarity in the drafting of trade mark specifications. The Court has called for national authorities to consider, on a case-by-case basis, the scope of claims to general indications within class headings. General indications are claims within a class heading, such as "providing of training" within the class 41 class heading "education; providing of training; entertainment; sporting and cultural activities".

Perhaps as part of a push to promote certainty (though some would disagree), the Court of Justice has opened the door for applicants to indicate whether they wish to claim all goods and services within a particular class at the time of filing a trade mark application.

Following the decision, OHIM immediately released a press statement in which it confirmed that CTM applications filed before 21 June 2012 for class headings will be taken to cover all the goods/services in a particular class unless it is specified that protection is only sought for particular goods and services in that class.

The press statement also declared that applicants must expressly state, in CTM applications filed on or after 21 June 2012, whether or not their intention is to cover all the goods or services in that class. This rebuttable presumption will doubtless be tested in the courts before long.

What does this mean for Australian businesses?

The decision highlights the importance of drafting trade mark specifications with precision and clarity, while also bearing in mind the ability to claim class headings (for example, when filing CTM applications).

For Australian brand owners, if the EU market is of interest or importance to your business, then your existing portfolio in the EU should be reviewed in light of the IP Translator decision, to ensure that the CJ's ruling does not pose any risks. This is equally as important in the context of any existing disputes.

For new filings – and while there are many factors to consider – thought should be given to adopting class headings or the relevant general indications from Nice class headings (together with the specific goods/services of interest) when filing the initial Australian trade mark application, particularly if an applicant is considering using the International Registration system later to extend protection beyond Australia to the EU.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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