Nice reference as CIPA plans to entertain

IP TRANSLATOR sounds a strange term for a UK registered trade mark for services in 'Class 41: Education; providing of training; entertainment; sporting and cultural activities.' Funnily enough, this list corresponds exactly to the class headings of Class 41 of the Nice Agreement. As luck would have it, the Chartered Institute of Patent Attorneys (CIPA) applied to register these very words for those services, only for the hearing officer to refuse the application. In his view (which you can read in full here):

1. Assessing the distinctiveness or descriptiveness of a mark under s.3(1)(b) and (c) must be done by reference to the goods and services applied for. The objection must pertain to all the services applied for, so that if services are specified which are free from objection they must be allowed to proceed. Since the main thrust of the debate between the Registry and the applicant was the coverage represented by the goods and services listed, the nature of the services at issue and the ambit of the specification were considered.

2. 'Translation' was included in the list of detailed services under Class 41. It was unclear to the Office whether this activity was included in any of the broader 'general indications' of the applicant's listed services and the Nice Classification heading. The only candidate was 'Cultural Activities', but it was admitted that one would have to interpret the phrase very widely to include translation within its ambit. Regardless, the examiner was entitled to conclude that this service was included as part of the applicant's claimed services in Class 41.

According to the Registry practice guide,

''The headings to the classes convey general indications relating to the fields to which goods or services belong. It follows that when determining the appropriate scope of protection to be afforded to a trade mark invoked in proceedings before the IPO, the question of what a class heading includes or does not include is irrelevant and interpretation of the statement of goods or services may only be made by reference to the goods or services covered by that statement.”

This being so, the IPO does not focus on the list of detailed services under a class, but instead interprets the goods and services which are listed in the application. This approach is in conflict with that of OHIM and other European Union Member States, which consider that the class headings include all goods and services in the class. 'As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all of the goods and services falling within this particular class.'

4. The differing approaches between OHIM and the IPO with regard to scope is thus as follows: at OHIM, a trade mark which is registered for a class heading will be deemed to cover all the goods and services in the class in question. At the IPO, on the other hand, a trade mark might be registered when it specifies a class heading and the mark applied for is descriptive of a good or service not included in the heading. Consequently, an application made to OHIM that specifies a class heading and consists of a mark that designates a characteristic of a good or service in that class but not overtly covered by the terms in the class heading will face an objection, whereas the IPO might allow such a registration. This can be problematic in a situation where an applicant applying for a Community trade mark relies on its earlier national registration. The OHIM’s approach has been supported in BMI Bertollo Srl v OHIM, in which a national application in Italy which listed the headings of several classes was deemed to cover all goods and services which compromised those classes.

5. The mark IP TRANSLATOR was wholly descriptive of services within the scope of Class 41 as well as the services deemed to be within the claimed list of services, which also happened to be the class heading of Class 41. In theory the precision needed when defining a mark should apply to defining the list of goods or services claimed in the application, but to do so would be applying the ruling of the Court of Justice in Sieckmann out of context. However, it would be in the public interest to follow BMI Bertollo and OHIM standards of practice. Accordingly s.3(1) was interpreted as applying to all the services covered by the class for which the applicant had used the relevant heading. Since 'translation' was thus included in the applicant's services, the mark was open to objection under s.3(1)(b) and (c).

The Chartered Institute of Patent Attorneys appealed to the Appointed Person (Geoffrey Hobbs QC, whose decision of 27 May you can study here. The important thing arising from this decision is that it gives us a much-needed and very welcome reference to the Court of Justice of the European Union of some questions which could greatly benefit from a preliminary ruling from Europe's Finest. The questions are as follows:

"Is it

(1) necessary for the various goods or services covered by a trade mark application to be identified with any and if so what particular degree of clarity and precision;

(2) permissible to use the general words of the Class Headings of the International Classification of Goods and Services established under the Nice Agreement ... for the purpose of identifying the various goods or services covered by a trade mark application;

(3) necessary or permissible for such use of the general words of the Class Headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4103 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003 (OJ OHIM 2003 p.1647)?"

Whose approach is right -- that of OHIM or the UK's Intellectual Property Office? Says the IPKat: "While I personally prefer the UK's practice, I can see justification for both positions -- and being a very tidy-minded Kat I think it's a good idea to have a 'one-way-fits-all-offices solution even it's not my favoured one. Says Merpel, "I'm just looking forward to seeing what entertainment services CIPA is planning ..."

Nice Classification here

Nice Biscuits here and here

Nice work if you can get it here

Nice One Cyril here