The Advocate General of the CJEU has indicated that the long established practice at OHIM to accept CTM applications on the basis of class headings is potentially illegitimate, which could significantly impact a large number of existing CTMs in all aspects, from enforcement and oppositions to invalidity and revocation proceedings.

The Opinion was given in case C-307/10, (the "IP TRANSLATOR" case), concerning the use of class headings from the Nice Classification to identify goods or services in a trade mark application or registration. In a test case, CIPA had applied and failed to register "IP Translator" as a UK trade mark for class 41 on the basis that this mark is descriptive, since class 41 includes translation services. On appeal, the Appointed Person stayed proceedings and referred questions to the CJEU to ask them to determine with what degree of precision goods or services need to be identified in a trade mark application, and in particular, whether the identification of goods or services by means of class headings is sufficiently precise to identify the goods/services.

The Advocate General opined that the goods or services must be identified with sufficient clarity and precision so as to enable the competent authority and economic operators to determine accurately the scope of the protection conferred by the trade mark. A reference to class headings may but will not always be sufficient identification provided that these requirements for precision and clarity are met. In practice, however, it seems likely that class-headings will rarely be considered precise enough as a result of the broad range of services that are usually included under a specific class.

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The original publication date for this article was 09/12/2011.