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.
For our full review and analysis of this important Opinion, click
here:
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 09/12/2011.