The future of EU specification drafting

AG opinion rocks the boat with OHIM

Advocate General Bot handed down his eagerly awaited opinion on Tuesday in the IP TRANSLATOR case (Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks). Opinion has been divided throughout the EU as to whether OHIM's "class headings cover all goods and services" approach to the registration and scope of protection of Community trade marks is legitimate or beneficial. Although almost half of the national registries think that it is, AG Bot opines that it is not. The issue is not just a legal one and seems to have triggered much behind the scenes politics. This is because of the practical impact that it could have on potentially thousands of existing registrations. It is possible that the Commission will address this in its revisions to the CTM system, even before the ECJ does.

It seems likely that the ECJ will follow this opinion. This is because the "clarity and precision" requirement for the identification of goods and services is the logical consequence of its judgment in Sieckmann (Case C-273/00). That requires similar conditions to be met in respect of the representation of the mark applied for. It is also clear that this is an issue that needs to be harmonised across the EU.

Read the background and summary of the Advocate General's opinion here

Practical Implications if the AG's opinion is followed:

• The UKIPO would maintain / revert to its "means what it says" approach to interpreting specifications and their scope of protection; whereas OHIM and various other national EU registries would need to revise their "class headings cover all" approach, not only going forward but how this would impact on the scope of protection of existing registrations.
• Existing CTM and certain national EU registrations claiming full class headings would then have a narrower scope of protection than previously thought. This applies to CTM (and some other EU national trade mark) owners that relied, wrongly it will have transpired, on the OHIM President's Communication. It will have less impact on those that claimed the full class headings as a "catch-all" and additionally specified the goods and services of real interest to them. In our experience that is likely to be the majority.
• Specifications should certainly be drafted more precisely going forward, but probably still not on a par with those required by the USPTO. This would have the advantage of reducing the number of conflicts and de-cluttering certain EU trade mark registers. The downside is that specifications may generally get longer, which would make clearance work more labour intensive.
• It remains unclear whether many general class headings which are commonly used without further specification, such as "clothing; footwear; headgear" in Class 25, actually satisfy the clarity and precision criteria or not.
• Can the specifications of existing CTMs and national marks be changed to avoid any perceived loss of protection? This will be important for some, but the answer is not clear. It may be dealt with by the Commission when it proposes changes to the EU trade mark system expected in February 2012. Without some sort of transitional measures, adding translation services to a Class 41 general heading, for example, would presumably be an impermissible broadening of the specification. However, specifying the type of repair services claimed in a Class 37 general heading should just be "clarifying" and restricting it and therefore permissible.
• For those whose protection is especially reliant on the current OHIM approach, it may be worth applying to amend the specification now, before the ECJ rules.

Lawyers Joanna Gray, Roland Mallinson