Potential change in the scope of trade mark protection

The Advocate General has provided his opinion on the questions referred to the Court of Justice of the European Union (ECJ) in the CIPA v Registrar of Trade Marks case, in which clarification was sought regarding the impact of using class headings to specify goods and services in a trade mark application. Under the practice of the Community Trade Mark Registry (OHIM), the default position has been that setting out the class heading meant all goods and services proper to that class would be covered.

CIPA applied to register the trade mark “IP translator” in class 41 under the full class heading of “education; providing of training; entertainment; sporting and cultural activities”. The application was initially rejected on the basis that the mark was considered to be descriptive of “translation services” which fall into class 41, although such services were not specifically designated in the
application, and a referral to the ECJ was sought.

The Advocate General has given the opinion that goods and services must be set out with sufficient clarity in the trade mark application to enable a trade mark’s scope of protection to be accurately determined. This can either be via a specific list or using a basic list of categories, where the category name takes on its normal and natural meaning. Class headings, however, do not provide such clarity.

The Advocate General’s opinion is not a binding decision on this matter; the final decision of the ECJ is still awaited. If the ECJ does heed the initial opinion, care will need to be taken when drafting specifications for Community trade mark applications because applicants will no longer be able to simply include the class heading as a catch-all phrase to provide protection for all goods and services in the specified class. However, the use of class headings to specify goods and services is not an approach we have favoured at Barker Brettell, as this is not in accordance with UK trade mark practice.