What's Next After The IP Translator Decision By The European Court Of Justice?

Author:Mr Boudewijn van Vondelen, Philippe Péters and Vincent Wellens

The IP Translator case decided by the European Court of Justice on 19 June 2012 already raised much interest and OHIM even changed its practice overnight after the decision of the ECJ. However, much remains unclear: how will the national offices respond, what will happen to existing registrations and will the decision have any other consequences? In other words, what's next?

In the IP Translator case concerned an application for registration of the trademark IP TRANSLATOR for education, providing of training, entertainment, sporting and cultural activities in class 41, but the application was refused.

The UK Registrar held that the denomination IP TRANSLATOR lacks distinctive character and is descriptive for translation services, and thus does not qualify as a trademark. The applicant stated that translation services were not included in the application, but the Registrar followed the classification practice of OHIM in Alicante. Because the application mentioned all services in the class-heading of class 41, the Registrar concluded that the application claimed protection for all possible goods and services in that class. (The class-heading is the list of general terms available for each class to describe the type of goods and services that fall into that class). Translation services are not part of the class-heading but, according to the Nice classification, fall into class 41.

The Nice classification includes an alphabetical list of goods and services containing about 12,000 entries. When applications are filed, the applicant can use the class-headings, descriptions from the alphabetical list or other terms that may be more suitable to describe the applicable goods or services under the mark claimed, as long as the description can be classified into the 45 classes and meets the standards of clarity and precision applied by the registration authorities, such as OHIM or the Benelux Office. While the official alphabetical list for class 41 contains only 167 terms, OHIM has already accepted over 3000 terms for this class alone. There is no limit to the number of acceptable terms within the framework of the classes.

The advantages of using a class-heading are obvious. These terms are available in all languages, come directly from the Nice Agreement and are broadly accepted by the national trademark offices. These offices will not require the applicant to provide a further explanation of customised lists of goods which are found to be too vague...

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