"You must be precise when you register a trademark", or why the Nice Classification needs a revision

In its Judgment of 19 June 2012 in case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks, the Court of Justice of the EU has stressed a principle in EU trade mark law that does not lose relevance despite being rather obvious: "the Trade Mark Directive [2008/95/EC of 22 October 2008, OJ 2008 L 299, p. 25] must be interpreted as meaning that it requires 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, on that basis alone, to determine the extent of the protection sought" (see press release: http://tinyurl.com/7nfv5k9). In line of principle, the finding does not seem to develop EU trade mark law substantially.

However, in my view, the CIPA Judgment flags up the need to revise, or at least fine-tune, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks [concluded at the Nice Diplomatic Conference on 15 June 1957, last revised in Geneva on 13 May 1977 and amended on 28 September 1979 (United Nations Treaty Series, Vol. 1154, No I 18200, p. 89)], since its structure and common use may be insufficient to guarantee compliance with the required standard of "sufficient clarity and precision to determine the extent of the protection sought".

In the case at hand, the Registrar of Trade Marks had refused an application by the Chartered Institute of Patent Attorneys (CIPA) for the registration of the designation ‘IP TRANSLATOR’ as a UK national trade mark. To identify the services covered by that registration CIPA used the general terms of the heading of a class of the Nice Classification: ‘Education; providing of training; entertainment; sporting and cultural activities’. Even if they are not mentioned in the class heading, other services such as translation services are grouped under the same class in the Nice Classificiation. Hence, the basic question in the CIPA case revolved around whether the application included translation services or not--since, in the view of the Registrar of Trade Marks, for these latter services the designation 'IP TRANSLATOR' lacked distinctive character and was descriptive in nature.

The CJEU has determined that the Trade Mark 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. But the CJEU has also found that recourse to the general headings in the Nice Classification is not always enough to meet the "sufficient clarity and precision" requirement, since some of the general indications in its class headings are too general and cover goods or services which are too varied to be compatible with the trade mark’s function as an indication of origin. Therefore, the CIPA Judgment raises an issue on whether the Nice Classification is apt to serve its intended function or, as it seems, requires a revision (after more than thirty years since the last one).

The CJEU has clearly placed the burden of overcoming those imprecisions of the Nice Classification on applicants, since "an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered".  

Therefore, trade mark applicants will have to sharpen their pencils and define more properly the scope of protection sought in their applications. Whether good practice in this area of IP enforcement will translate into a revision and improvement of the Nice Classification remains to be seen, though.