The Irish Patents Office has issued a note confirming its practice in relation to the use of ‘class headings’ as designations of goods and services in applications to register a trademark.
This follows the decision of the Court of Justice of the European Union (CJEU) in the IP Translator case (Chartered Institute of Patent Attorneys v Registrar of Trade Marks, C-307/10).
It is essential to have clarity and precision in relation to the goods and services for which a trademark is to be registered. Why? Well registered trademark law attempts to balance the competing monopoly right to use a mark as a source of origin identifier and the benefits of open competition for the consumer. To achieve this effectively, the practicality of interpreting what goods or services are or are not protected by review of the trademark register alone (and without having to exercise any special skill) must be promoted. This approach also ties in nicely with the manner in which trademarks and goods or services are compared in infringement proceedings, which is effectively in a vacuum of other considerations.
The Nice Classification provides an internationally recognised classification system of goods and services in respect of which trade marks may be registered. Ireland applies the Nice classification system. Under the Nice Classification, goods and services are categorised in classes, each of which relate to a particular field or fields of commercial activity, for example, food and drink, pharmaceuticals, financial services, etc. The classification consists of 34 classes of goods (classes 1 – 34 inclusive) and 11 classes of services (35 – 45 inclusive). Each class is headed by a ‘Class Heading’ which provides ‘General Indications’ relating to the fields to which goods or services belong. A detailed alphabetical list of items proper to each class is provided under each Class Heading.
Judgment of the CJEU in IP Translator:-
In IP Translator the Court answered three questions about the extent of clarity required for the identification of goods and services and the use and significance of class headings and general indications to identify goods and services in applications to register trademarks. It decided that:-
a) the goods and services for which the protection of a trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable others, on that basis alone, to determine the extent of the protection conferred by the trade mark.
b) the general indications of the class headings can be used to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise.
c) An applicant for a national trade mark who uses all the general indications of a particular class heading to identify the goods or services for which the protection of the trade mark is sought must specify whether its application is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which goods or services.
Position of the Irish Patents Office:-
The Patents Office has now stated its view that the most important requirement is (a) answer to be sufficiently clear and precise in the description of goods and services so that the scope of protection is clear to others, on the sole basis of that description. That takes precedence over the answers to the other two questions (b) and (c).
It considers that certain general indications in class headings are too vague to meet this requirement of clarity and precision. Where it finds that this is the case, the Patents Office will object to the application and demand greater clarity. It highlights examples, such as ‘machines’ in Class 7 and ‘repair’ in Class 37.
The Patents Office will reject an application specifying ‘all goods (or services)’ in a class. Where an application consists of a claim to all the general indications of a particular class heading, for example, presented as a list, but without wording such as “meaning all the goods in class X” or the like it will accept that specification provided that all the general indications listed individually meet the requirements for clarity and precision. In this scenario, the extent of protection will be limited to the normal and natural meanings of the words used in the general indications. An applicant must explicitly name the goods and services of the alphabetical list that their application is intended to cover, even if it is all of them.
Words describing goods and services will be given their ordinary dictionary meaning when the Patents Office is deciding whether the description is sufficiently clear and precise.
The Patents Office has found that there is no room for qualifying wording that does not add any clarity or precision to the specification of goods and services. Accordingly, the Patents Office may not accept a specification containing the mention of particular goods or services plus the words “…not included in other classes”, or similar. Say good bye to that safety net!
The full note is available here on the website of the Irish Patents Office.