Clarification of the requirements for the identification of the goods and services in a trade mark application
The Court of Justice (CJ) of the European Union has recently given a judgement in a very interesting case (C-307/10), where it was asked to clarify the requirement of clarity and precision for the identification of the goods and services for which the protection of the trade mark is sought and whether it is possible to use, for that purpose, the general indications of the class headings of the Nice Classification.
Briefly, “IP TRANSLATOR” was applied as a national trade mark. To identify the services covered by that registration general terms of the heading of a class of the Nice Classification were used, that is to say, ‘Education; providing of training; entertainment; sporting and cultural activities’.
The national registrar refused that application on the ground that it would cover not only services of the kind specified in the application, but also every other service falling within that class of the Nice Classification, including translation services. Accordingly, for these latter services the designation IP TRANSLATOR lacked distinctive character and was descriptive in nature.
The CJ firstly emphasised, that the Trade Mark Directive do require the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection sought.
Secondly, the CJ held that the directive does not preclude 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. However, it is for the competent authorities to make an assessment on a case-by-case basis, in order to determine whether those indications meet the requirements of clarity and precision.
To read in full the CJ press release, please click here.
Comment this article on our LinkedIn group