Dechert OnPoint: New EU Trademark Regime to Address ECJ’s Decision in IP Translator

Dechert is partnering with Georgia Today on a regular section of the paper which will provide updated information regarding significant legal changes and developments in Georgia. In particular, we will highlight significant issues which may impact businesses operating in Georgia. Contributing this week is London-based Dechert Partner Paul Kavanagh. Mr. Kavanagh is an expert in intellectual property who specializes in technology licensing and transactions, trademark and copyright issues, and intellectual property litigation. He regularly speaks at conferences and seminars and has contributed to a number of intellectual property-related journals and books. Mr. Kavanagh is recognized by Chambers UK and The Legal 500 as a leading voice in the field of intellectual property law, with the former calling him “an impressive authority on trademarks.”


New EU Trade Mark Regime to address ECJ’s Decision in IP Translator

The European Court of Justice’s June 2012 decision in IP TRANSLATOR changed the way trade mark specifications are interpreted. OHIM’s application of this decision led to inconsistent interpretations of trade mark specifications depending on whether they pre- or post-dated that decision. The new EU Regulation governing EU-wide trademarks looks set to remove this inconsistency, but at the expense of CTM owners. This week’s edition of OnPoint provides an in-depth analysis of the new regime.

The two key pieces of legislation that govern trade marks in the EU are the Community Trade Mark Regulation (the “CTM Regulation”) and the Trade Mark Directive. The CTM Regulation governs Community Trade Marks (“CTMs”), which are registered trademarks that confer rights on the owner throughout the EU. The Trade Mark Directive, by contrast, harmonizes the regulation of national marks by individual EU Member States.

On 8 June 2015 the Council of the EU published finalized texts of a recast Trade Mark Directive and a new Regulation amending the CTM Regulation (the “New Regulation”). These texts followed a political agreement on a new trade mark regime reached by the Council, European Parliament and European Commission on 21 April 2015. Whilst the New Regulation is yet to be formally adopted, it is unlikely that there will be substantial changes to its provisions.

Broadly, the owner of a valid registered Community trade mark (“CTM”) has an exclusive right to use that mark for the goods and/or services specified in the CTM registration. Goods and services are categorized into various classes, pursuant to the Nice regime. The contents of each Nice class is summarized by class headings, however the class headings are far from comprehensive and often belie the true breadth of goods/services covered by that class. The breadth of each class can vary substantially, for example Class 33 only covers alcoholic beverages other than beer whereas Class 45 includes services as diverse as pet sitting and horoscope casting.


The New Regulation will bring welcome consistency to the interpretation of class headings used in CTM specifications, as the meaning held by class headings will no longer depend on the date on which the application was filed. However, the New Regulation threatens to diminish the protection attached to CTMs pre-dating 22 June 2012 that used class headings, unless CTM owners are pro-active in making a declaration to add goods/services to the specifications. As much of the protection offered by such additions is not retrospective the earlier the additions are made the better, so it is recommended that CTM owners start preparing to make the necessary declaration before the New Regulation comes into force.

Trademark owners should:

1. carry out an audit of any CTMs applied for prior to 22 June 2012 to identify any CTMs that specify goods/services using class headings;

2. assess in each case whether use of the class heading was intended to confer protection for goods/services beyond those covered by the literal meaning of the headings; and

3. consider whether to make a declaration to the EU Intellectual Property Office ( “EU IPO”, which will be replacing OHIM under the new regime), once the New Regulation comes into force, to extend the goods/services covered by the CTM and, if appropriate, which goods/services should be specified in that declaration.


In the case of IP TRANSLATOR (which has been the subject of much debate among trade mark practitioners) the Chartered Institute of Patent Attorneys applied to register the mark “IP TRANSLATOR” in the UK. The goods/services specification simply listed the class headings for Class 41. The UK Intellectual Property Office (the “UK IPO”) considered that listing the headings for a class amounted to claiming protection for all the services in that class even though not all of those services were listed explicitly and even if not all of those services fell within the literal meaning of the headings. This reflected the approach taken at that time by OHIM and a number of national IP offices. It had become common practice to use class headings in this way to register CTMs for the entirety of a class.

The applicant challenged the UK IPO’s decision before the English High Court, which made a reference to the European Court of Justice. The issue for the ECJ to consider was whether specifying the headings of a particular class meant that all possible goods/services within that class were covered by the trade mark.

In its decision dated 22 June 2012, the ECJ held that:

1. the goods/services for which trade mark protection is sought must be identified with sufficient clarity to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;

2. some class headings can properly be used to identify goods/services, as they are in themselves sufficiently clear and precise; and

3. when using the class headings an applicant can indicate that it wants its registration to cover all the goods/services included in the full alphabetical Nice list for that class, but, if the applicant does not intend its application to cover all the goods/services on the full list, it must specify the particular goods/services that it intends to be covered.

Subsequent OHIM practice

A key area of difficulty following the IP TRANSLATOR decision was how to treat CTMs filed before the IP TRANSLATOR decision, given that OHIM’s guidance prior to IP TRANSLATOR suggested that using the class headings was an effective way of obtaining protection for the full alphabetical Nice list.

OHIM attempted to reconcile the IP TRANSLATOR decision with its previous guidance by treating all of the applications made before the IP TRANSLATOR decision that used the class headings as covering (i) the literal meaning of the class headings, and (ii) all the goods/services listed in the full Nice alphabetical list in force at the time of filing. By contrast OHIM has interpreted class headings used in applications made after IP TRANSLATOR literally and not as automatically importing the full Nice list.

More generally OHIM now applies the requirement of “clarity and precision”, as established in IP TRANSLATOR, when considering CTM specifications.

The New European Trade Mark Regime

The New Regulation provides for a change in approach towards pre-IP TRANSLATOR CTMs. Pre-IP TRANSLATOR CTMs that use class headings will be treated as registered just for goods/services within the literal meaning of the relevant class heading and not for the full alphabetical list. This brings the interpretation of pre-IP TRANSLATOR CTMs in line with OHIM’s current practice in relation to new applications, but will restrict the extent of the rights attached to a large number of CTMs.

However, the New Regulation offers owners of pre-IP TRANSLATOR CTMs an opportunity to avoid this restriction. CTM owners that used class headings to specify goods/services can make a declaration within 6 months of the New Regulation coming into force that when using the class headings in their CTM application their intention was to seek protection in respect of goods/services beyond those covered by the literal meaning of class headings. This declaration must specify which additional goods/services (from the alphabetical list in force at the date of filing) the applicant intended to be covered. The EU IPO will then take “appropriate measures” to amend the register accordingly.

The rights attached to goods/services added under the declaration procedure are limited as the amendment to the specification will, in significant respects, not be retrospective. When seeking to prevent a third party’s use of a mark, where such use started before amendments were made to a specification, the owner of an EU trade mark (as a CTM will be known once the New Regulation comes into force) will not be able to rely on additions made under the declaration procedure, just on the literal meaning of goods/services on the register at the time third party started the potentially infringing use. Similarly, an owner of an EU trade mark will not be able to rely on the additional goods/services when opposing or applying for a declaration of invalidity of a later trade mark if the later mark was applied for or used before the register was amended.

The New Regulation also codifies the ECJ’s dicta in IP TRANSLATOR providing that the EU IPO shall reject applications where the goods/services are unclear or imprecise, unless the applicant suggests acceptable wording within a period set by the EU IPO.


The New Regulation threatens to strip rights away from certain CTMs. CTM owners should take the steps outlined above to evaluate the risk that these changes pose to their CTM portfolio and to minimize the impact on any CTMs adversely affected.

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Note: this article does not constitute legal advice. You are responsible for consulting with your own professional legal advisors concerning specific circumstances for your business.

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16 November 2015 20:16