Trade mark classes are not Nice and easy

Not always an easy Office

"Unless familiar with the law of registered trade marks, you might think that it is relatively straightforward. Regrettably, you would be wrong." So begins, Carr J's latest trade mark judgment in the English High Court - Pathway IP SARL v Easygroup Ltd [2018] EWHC 3608.

This case was a High Court appeal from a successful application by EasyGroup to revoke two trade marks for non-use.  The mark in question was"easyoffice" in various fonts and coloured backgrounds.

The main point of interest in this case concerned whether the Hearing Officer wrongly construed the scope of registered services by reference to the classes set out in the Nice Classification. More specifically, whether he narrowed the natural meaning of the services by reference to Class 35.

(There is a an interesting side issue regarding late evidence which was the subject of several cases last year including Consolidated Developments Ltd v Cooper [2018] EWHC 1727 and the Halloumi case [2018] EWHC 3226. A post on late evidence is one of many New Year's resolutions.)

No trifling matter

The dispute began in September 2009 - as Carr J put it "this case has taken an extraordinary amount of time to reach this stage." However, as a philosopher once said, "if you want the rainbow, you've got to put up with the rain" and the long wait was worth it for EasyGroup which ultimately prevailed in the appeal.

After considering the authorities on the relevance of the class number to interpretation of the specification, Carr J provisionally concluded that it "is appropriate to use class number as an aid to interpretation of the specification where the words used in the specification lack clarity and precision. This applies to granted registrations as well as to applications, and therefore applies in the context of infringement actions and revocation claims" [79].

IP Translator 

This was in large part because of the IP Translator (ECLI:EU:C:2012:361; [2013] RPC 11) decision which Carr J handily summarised as follows:

1. The obligation to use the Nice Classification stems from Art.2(3) of the Nice Agreement.
2. The Nice Agreement refers to the competent Office of the countries of the Special Union. This encompasses almost all the Member States and includes the official documents and publications relating to registrations of marks the numbers of the classes of the Nice Classification.
3. Clarity and precision must considered in relation to both applications and registered trade marks. This benefits both the trade mark offices and businesses.
4. General indications of the class headings to identify the goods and services are fine as long as the identifications are sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought.
5. Different approaches to the use of the general indications of the class headings of the Nice Classification might lead to a difference in the extent of the protection of a national trade mark if it is registered in several Member States, and of the protection of the same mark if it was also registered as a Community trade mark. This ran the risk of undermining legal certainty both for the applicant and for its competitors;
6. Therefore, the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought was not precluded, provided that such identification is sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought.

Classy - just like a chilled out entertainer

The bottom line is that class numbers are not always necessary to achieve clarity and precision in the specification. Where class numbers are used, it is merely confirmatory and does not change the meaning of the terms used.

Whilst the class is not always relevant for determining the scope of a specification, Carr J concluded that in the context of revocation applications based on no genuine use, where a specification otherwise lacks clarity and precision, it may be of considerable importance to be able to refer to the class in which the goods or services are registered.

Carr J also noted that both EUIPO and UKIPO take class numbers into account so his conclusions are in line with current practice (although this was not a determinative factor).

What does this mean?

In many (even most) instances (including this case), the words in the specification are sufficiently clear and precise for such class number interpretation to be unnecessary. However, if there is a lack of clarity and precision, this case shows that there is now a good basis for taking the class number into account.