CJEU rules on ‘IP translator’ as a UK trade mark

An interesting landmark case today…

On 16 October 2009, the Chartered Institute of Patent Attorneys (CIPA) applied to register the designation ‘IP TRANSLATOR’ as a UK trade mark. To identify the services covered by that registration the CIPA used the heading of Class 41 of the Nice Classification which includes translation but is called ‘Education; providing of training; entertainment; sporting and cultural activities’.

The UK Intellectual Property Office refused the application, stating that the class description included ‘translation services’. The proposed trade mark would thus have lacked distinctive character and been descriptive in nature, too similar to the class description itself.

On February 25 2010 the CIPA appealed to the UK’s High Court of Justice (Queen’s Bench Division), contending that since its application for registration did not specify, and therefore did not cover, translation services in Class 41, it should not be rejected on the basis that it was non-distinctive or descriptive for these services.

The UK Court then referred the case to the Court of Justice of the European Union (CJEU) for a ruling. The CJEU ruled that it was necessary to identify the goods and services for which protection of a trademark was sought with sufficient clarity and precision. To find out more, you can read the recent CJEU press release here.

In terms of the implications of all this, Novagraaf, an international patent and trademark consultancy, has published the following summary on their website:

  • Trademark owners that already have registrations in place need to evaluate their current portfolio to ensure that their registrations actually protect them for the goods and services they think they are protected for;
  • Companies with registrations currently going through the system need to consider whether their application covers the goods and services they think are covered;
  • Those involved in opposition and infringement proceedings need to evaluate whether the registration on which the opposition is based covers the goods and services they think are covered; and
  • Future trademarks applications will need to be drafted in light of the ruling and its implementation in their national registries to ensure adequate protection.

On the plus side, it should mean in future that in opposition and infringement cases, a registration in the EU should be deemed to cover the same goods or services in all the countries of the EU, making litigation in more than one country easier, more predictable and consistent.

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