As all trade mark practitioners know, goods and services are divided up into a number of different “classes” and those classes have accepted headings. The headings set out, in broad terms, which goods and services fall within that class.
For some time, the Community trade marks office (“OHIM”) has said that where a trade mark registration includes the exact wording from the class heading, then that registration is deemed to cover every good or service in that particular class, irrespective of whether it is evident to the non-trade mark practitioner that the particular good or service would be covered by that description. For example, the class heading for what is known as class 41 is “education; providing of training; entertainment; sporting and cultural activities”. There are other services, however, such as translation services which fall within this class. If the wording “education; providing of training; entertainment; sporting and cultural activities” appears in class 41 in a trade mark registration, then OHIM would interpret that to mean that all services falling within that class, including translation services, are covered by the registration. Other intellectual property offices within the European Union view the matter differently and would say that “translation services” are not covered by such a registration.
This clearly results in uncertainty. In my example above, does the registration cover translation services or not? In certain circumstances, the answer to that question could determine whether or not a registration is infringed so could have serious consequences. A UK trade mark case has tried to get clarification of this issue.
The UK Chartered Institute of Patent Attorneys (“CIPA”) applied to register the mark IP TRANSLATOR in the UK for the class heading in class 41. The trade marks examiner refused the application on the grounds that the mark was descriptive of translation services and that, following OHIM’s practice, the use of the class heading meant that all services in that class, including translation services, were included. CIPA argued that that was not the case. The matter was appealed within the UK Intellectual Property Office, who then referred the question of the interpretation of class heading wording to the Court of Justice of the European Union (“CJEU”).
The CJEU gave its decision on 19 June 2012 but, unfortunately, did not give a simple “yes” or “no” answer. What the decision appears to say is that simply using the class heading is not enough and that additionally it must be made clear whether the use of the class heading is intended to cover all the goods and services included in that class or only some. However, the court has not stated how such clarity must be given. In fact, in the case in question, the Court said that “it is for the referring court to determine whether [CIPA], when it used all the genuine 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 this application was intended to cover translation services”.
So it seems that whilst use of the class heading can cover all goods and services in that class if that fact is specified, mere use of the class heading might constitute the necessary specification.
For new applications, the prudent route for those who wish to cover all goods or services within a particular class, is to add wording to the class heading making it clear that all goods or services should be covered. But what happens with all of those many registrations which are already on the register? How are they to be interpreted? Again, prudence says that, if it is not clear that important goods or services are covered by the wording of the class heading, new applications should be filed.
For many trade mark proprietors, whether or not a registration covers goods or services which are not obviously included in the description of a class heading will not be of concern. In many cases, the additional goods or services will be ones that are not of any interest to the proprietor. However, these proprietors should not be complacent.
Whilst the CJEU stated that use of the class heading wording can only cover all goods or services if that intention is specified (without explaining how it is specified), it went on to say that “an application for registration which does not make it possible to establish whether, by using a particular class heading of the Nice Classification, the applicant intends to cover all or only some of the goods in that class cannot be considered sufficiently clear and precise”. As a “sufficiently clear and precise” description of the goods and services is a requirement of a valid registration, this statement opens up the possibility of registrations which cover class headings being open to attack on the grounds of invalidity.
Given the number of potential registrations involved, a court charged with interpreting this comment by the CJEU will hopefully not find that a registration is invalid.
In the meantime, those registered proprietors who use class headings in their specifications are well advised to review them with a view either to limiting them marginally, so that no class heading is contained; or filing new applications which specifically cover goods or services of interest or which specify that use of the class heading is intended to mean that all goods or services within that class are covered.