EU trade mark applicants must specify Nice classification class headings – CIPA v Registrar of Trade Marks, European Court of Justice
The European Court of Justice has ruled that trade mark applicants in the European Union must specify the exact nature of the goods and services to be covered by the trade mark.
In this case, the Chartered Institute of Patent Attorneys applied to register “IP TRANSLATOR” as a trade mark in class 41 for “education; providing of training; entertainment; sporting and cultural activities”. The Intellectual Property Office had refused the application on the basis that the wording used for the specification had adopted the general words of the class heading for class 41. Therefore, the application should be assumed to cover not just the listed services but also every other service falling within class 41, which would include translation services. The trade mark application would therefore fail on the grounds that the trade mark was descriptive of the services covered. On appeal, the matter was referred to the ECJ for a ruling on the point of law.
The ECJ said that goods and services included in a trade mark application must be listed precisely and clearly enough to enable authorities and traders to determine solely on the basis of that list the scope of any trade mark rights. Trade mark applicants can use the general indications on the Nice Classification class headings as long as this is clear and precise enough. If an applicant uses all the general indications of a particular class in the Nice Classification list, it must also specify whether it intends to cover all of the goods or services suggested in the alphabetical list for that class or only some of them. If only some of them, it would need to specify which ones.