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IP Translator: The EU Trademark Case Decision’s Affect on Applications

Posted in Trademarks

On June 19, 2012, the Court of Justice of the European Union issued a decision in a trademark case where the applicant sought registration for IP TRANSLATOR, using a class heading of “educational services” to identify the services.  Prior to this decision, an applicant for trademark protection in the European Union could use a class heading under the Nice Agreement – which sets out classes for goods/services, each of which are designated by a class headings that covers an alphabetical list of goods or services – rather than listing each good or service in the application.

The application in the IP TRANSLATOR case was refused on the grounds that the mark is descriptive of translation services, which are listed within the alphabetical listing for the class.  A question before the Court was whether applicants could continue using “all goods in the class” for trademark applications. 

The Court of Justice held that, while use of “all of the goods or services in the alphabetical list of the Nice Agreement for that class” is allowed, an applicant must indicate the goods/services with sufficient “clarity and precision” to allow a determination of the extent of the protection conferred by the trademark.

Each National Office in the European Union must now determine what constitutes a “clear and precise” specification of goods or services.  The office that handles Community Trademark applications is requiring applicants who wish to use a class heading to cover goods/services, to affirm the following: “by using the Nice Agreement class headings in my list of goods and services, I hereby confirm that I am applying for all of the goods or services included in the alphabetical list of each class filed.“ 

The decision will affect trademark applications submitted in the European Union after June 21, 2012, where the applicant uses a class heading to indicate goods or services.  In that the Court of Justice held that use of a class heading covers “all goods or services in the >alphabetical list”,  an applicant wishing to designate “all goods in the class” should consider specifying the good/service separately where the applicant’s goods or services are not included in the alphabetical list for a class.
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