PAY CAREFUL ATTENTION TO THE WORDING USED FOR YOUR TRADE MARKS !
The Court of Justice of the European Union was seized with three preliminary questions referred by the High Court of Justice of the United Kingdom, leading to the judgment dated 19 June 2012 (referred to as the IP Translator Judgment).
The Court was asked to rule on a number of questions related to the interpretation of Directive 2008/95 EC of the European Parliament and Council dated 22 October 2008 on the issue of whether this Directive requires the goods and services designated for the registration of a trade mark to be specified with a certain degree of clarity and precision.
If so, it was to determine whether the same Directive opposed the use of a general class wording and if such use ipso facto allowed for a claim covering all the goods and services of said class.
To these questions, the Court answered that the Directive required the goods and services for which the trade mark protection was requested to be sufficiently clear and precise, not just to harmonise the work methods of the national competent authorities but also to ensure legal certainty for the various economic operators involved.
The Court also held that Directive 2008/95 does not forbid the use of general class headings for goods and services as long as, upon registration, the applicant indicates whether the request for protection covers all of the goods and services in the relevant class.
The press release issued by the INPI on 15 January of this year contradicts the Court's ruling in this regard and limits its scope.
Indeed, unlike the OHIM, the INPI takes the position that it is not possible to designate all of the goods and services of a class by using the general heading followed by an indication that claims protection applies to all of the goods and services in the relevant class. The applicant must include in the trade mark application’s wording a precise list in alphabetical order of the specific goods and services in the targeted class as set out in the Nice Classification in order to meet the clarity and precision requirements.
Applicants who decide to follow the 19 June 2012 decision of the Court of Justice by using the following wording - "protection is claimed for all of the goods and services in the class" - would receive a notice of irregularity requiring a correction, and if conformity is not established, their application would be the subject of a partial rejection and would only be accepted for the goods and services indicated in the registration.
The INPI therefore requires a precise list of the goods and services in the class for which protection is claimed.
LAVOIX remains at your disposal for assistance in this regard.
- Publication date: March 2013
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