Williams Powell

British and European Patent and Trade Mark Attorneys

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For many years trade mark offices and trade organisations struggled with the concept of registration of trade marks for retail services, which until comparatively recently were not considered to constitute a service for which a trade mark could be registered: retail was considered a “service” which was merely ancillary to the goods themselves.  Subsequently, trade mark applications for retail services were deemed acceptable, provided that they employed a circumlocutory form of words, and current practice is that one may claim protection for “retail services” as long as the range of goods to be retailed is particularised in the application.

In a recent case in which Williams Powell represented a Community trade mark applicant whose services included retail of jewellery, the application was opposed by the owner of a similar trade mark which a national trade mark office has registered for “retail services” generally, without mention of the goods sold by the opponent. 

The usual outcome in a situation of this kind would be that the specific goods or services falling within the scope of the more general description of goods or services would be considered identical, thereby increasing the overall likelihood that the application would be refused.  In this particular case, the Community Trade Mark Office noted that the national registration did not comply with current practice, deciding that the “retail services” for which it was registered were too vague and indefinite to allow the registration to be enforced, and so rejected what had appeared to be a strong opposition.

The moral of this is and the earlier summary is that a trade mark portfolio should be reviewed periodically to ensure that registered marks are maintained in line with current practice, and that standard filing instructions agreed between client and attorney are regularly reviewed and updated to take into account changes in the law.

A recent decision of the Court of Justice of the European Union (CJEU) raises questions in connection with a fundamental aspect of trade mark registration.

Trade marks are registered in relation to specific goods and services which are arranged into forty-five “classes”, principally for the sake of administrative convenience.  These classes are given “class headings” as a broad indication of the range of goods or services they cover.  Some of these class headings are comprehensive and self-explanatory, whereas others (mainly those classes which draw together a disparate collection of goods or services) make no attempt at providing even a general indication of some of the goods or services included in the class.  For example, the class 25 heading is “clothing, footwear and headgear”, whereas the class 41 heading – “education; providing of training; entertainment; sporting and cultural activities” also includes, for example, translation services. 

The referral of the IP Translator case to the CJEU was aimed at achieving clarification of the scope of protection for trade marks claiming the “class heading”: are the headings effectively magic words which confer protection for all goods or services in the class, even those which are not mentioned and do not fall within the normal meaning of the words, or should they be construed more narrowly?  The question is important both for owners of registered trade marks and traders wishing to adopt a new trade mark, because, generally speaking, identical or similar trade marks may co-exist in relation to dissimilar goods or services, but not identical or similar goods or services.  The accurate assessment of a potentially conflicting mark can determine whether a new mark is available for use, or would infringe the registered mark.

Prior to this summer’s CJEU decision, Community Trade Mark Office practice was that the class heading conferred protection for all goods or services in the class.  The CJEU decision emphasises the importance of clarity and precision when describing the goods and/or services claimed in a trade mark application, from which it is to be inferred that the class heading “clothing, footwear and headgear” will continue to confer protection for all goods which fall within the natural definitions of these words, but, as translation services do not fall within the everyday meaning of the class heading terms “education; providing of training; entertainment; sporting and cultural activities” an applicant relying on these words to claim protection for all goods and services in the class, including translation services, must make an express statement to this effect.

This new guidance is not to be applied retrospectively.  Trade marks employing the class headings filed with the Community Trade Mark Office before the entry into force of the new practice, on 21 June 2012, will be treated as conferring protection for the full alphabetical list of goods or services in the class.   

How much does this matter?  The scope of protection for a class heading can make the difference between infringement or non-infringement.  It is accordingly highly important in the context of a trade mark search which finds potentially conflicting third party rights.

In more general terms, some will find it strange – and justifiably so – that any company should consider that it has a legitimate need to register its trade mark for all goods or services in certain classes.  Class 9, for example, includes goods which range from computer software (for all conceivable purposes) to safety footwear, via cash registers.  From this point of view, whilst legal certainty is necessary when interpreting the protection enjoyed by registered marks, and whilst the class headings are a useful short-hand for use when filing new applications in a hurry, the practice is essentially lazy, and there is no substitute for a proper analysis of a company’s individual need for trade mark protection, by reference to its actual products.

Tagged in: class trade mark