In a ruling delivered on 25 June this year, the European Court of Justice emphasised the precision with which goods and services being designated by a sign must be indicated in a trademark application.
The ECJ held that goods and services being designated must be identified by the applicant with sufficient clarity and precision to an extent that competent authorities or economic operators can determine the extent of the protection conferred by the trademark.
Goods and services are designated by reference to the Nice Classification which contains 34 classes of goods and 11 classes of services. Each class, which is designated through ‘class headings’ that indicate in a general manner the fields to which the products belong to, contains an alphabetical list of goods and services that exceed the 12000 in number.
Under the Community Trademark System, of which Malta is a member, the two essential elements when registering a trademark are:
- The sign itself; and
- The goods and services that a sign is to designate.
The combination of both elements determined the extent of the protection conferred by the registered mark on its proprietor.
In 2009, the Chartered Institute of Patent Attorneys (CIPA) sought to register the designation ‘IP TRANSLATOR’ as a national trademark listing ‘Education; providing of training; entertainment; sporting and cultural activities’, which is the general heading of Class 41 of the Nice Classification. CIPA’s application was refused on the grounds that:
The application covered not only the services specified by CIPA but other services falling within Class 41, including translation services
- From the above it followed that when translation services are included among the designated services, the word-sign IP TRANSLATOR lacked distinctive character and was descriptive in nature.
- There was no evidence that the word-sign IP TRANSLATOR had acquired distinctive character
- CIPA appealed the decision arguing that its application for registration was not specific and that thus, as a result, it did not cover translation services.
In its deliberations, the ECJ emphasised that while the Trademark Directive does not preclude the use of the general indications of the class headings of the Nice Classification, the Directive must be interpreted as requiring a clear and precise description that enables competent authorities and economic operators to determine the extent of the protection sought.
The ECJ acknowledged that while some of the general indications in the class headings of the Nice Classification are sufficiently precise, other class headings are too general and are not sufficiently indicative to designate the trademark’s function as an indicator or origin.
As a result, it rests with competent authorities to determine whether the indications provided by the applicant meet the requirement of clarity and precision. In this case, the competent authorities must determine whether in the application, the applicant sought to cover all the services in that class.
