What is IP TRANSLATOR all about?

It’s the shorthand title to a 2012 decision of the Court of Justice of the European Union, Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks which has had very severe repercussions for anyone who had relied on the EUIPO policy that there was no need for a trade mark registration to have a detailed list of its goods and services if it instead contained only the heading to the relevant class of the Nice Classification.

Clients of this practice are not affected by IP TRANSLATOR, because I did not rely on the EUIPO policy in any event.

I therefore offer this note below, written back in 2013, for visitors to my website, or for anyone curious about why IP TRANSLATOR created such a crisis that the EUIPO felt it necessary to enact legislation to give owners of EUTMS a chance to re-word their goods and services ( see Article 28 of the 2016 EU Regulation)

Note: back in 2012, what we now call an EUTM was called a CTM and the EUIPO’s name was OHIM.

In the EU, at either CTM level or at national level, any application for registration of a trade mark needs to include a list of goods/services.

For a CTM, there is no need for the applicant to have an intention to use the mark for any of the goods and services in that list. At national level, there is a requirement to have such an intention for some countries – the UK is one of them – but a CTM has no such requirement.

A CTM applicant can therefore claim all goods and services in any class, or in all 45 classes.

But, if the CTM application reads “all goods in class xxx” OHIM  does not accept that this is a list of goods/services, and OHIM, automatically and without consulting the applicant, changes “all goods in class xxx” to the class heading of the class in question. Thereafter, for all matters at OHIM – including oppositions – OHIM would rely on its Communication No 4/03 to always interpret any class heading as covering all goods/services in that class whether or not any class heading actually was in its literal interpretation general enough to cover all the goods and services in the class in question. Example: the class heading for class 15 is “musical instruments”. Class 15 is the class for music stands. Music stands are not instruments which play music. Therefore the language of the class heading is not literally general enough to cover music stands. OHIM nonetheless deems the class heading enough to cover music stands even though a literal interpretation of the class heading would not cover them.

OHIM’s “official policy” approach to language is driven by OHIM’s desire to lessen its workload, both in terms of translating CTMs into all the languages required by EU legislation, and in the time taken to interpret them: for example, an official policy which dictates that any class heading should always be construed to cover the whole class means that in oppositions more goods and services of both parties will be held identical than if only a literal interpretation were given to their class headings; this is a great time-saver for the OHIM official who has to write the opposition decision; it is easy to say that the goods/services are identical, and then he needs only spend time on the comparison of the marks.

A CTM however covers all countries of the EU, and can be the subject of proceedings in any of those countries. It is not solely therefore the OHIM which will be the forum for interpretation of the specification of a CTM. The courts hearing infringements of CTMs in all countries will also be the forum for CTM interpretation.

Moreover, the same trade mark may be registered for the same goods and services at both national level as well as at CTM level. Each of the national trade mark Offices is therefore the forum for interpretation of a trade mark registration on its register, even though OHIM is the forum for the interpretation of the CTM for those same goods and services.

The OHIM “official policy” approach to language is in direct contradiction to the practice of some of those courts and Offices, including the UK courts. In the UK, a registration’s list of goods and services must be interpreted literally. Music stands would not be included in “musical instruments” if decided by a UK court or the UK Office.

Clearly, it is not in anyone’s interests for the same goods/services in the same CTM registration [or a registration on any of the national registers for the same goods and services as a CTM] to be interpreted differently solely according to which Office or court is doing the interpretation.  In particular, it is not fair to expect anyone accessing the register of trade marks to know that the same words on the register will be interpreted one way by one Office but a different way by a different Office or court, especially when one of those interpretations is based on a practice note which is buried in the labyrinth of the OHIM website.

The UK Chartered Institute of Patent Attorneys therefore brought a test case via the UKIPO, called IP TRANSLATOR, to obtain a ruling as to which interpretation – official policy or literal -was the right one. CIPA applied for the mark IP TRANSLATOR to the UKIPO for the class 41 heading of “education; providing of training; entertainment; sporting and cultural activities”. The UKIPO decided that it should interpret this heading on the basis of the OHIM official policy and that accordingly it contained translation services, which in turn caused an objection that  IP TRANSLATOR was  descriptive/non distinctive for translation services. CIPA appealed the refusal to the Appointed Person, who referred the question of construction of the specification to the CJEU.

The CJEU ruled that no list of goods and services should be interpreted according to official policy. OHIM’s approach to deem automatically that any class heading always covers the whole class is therefore wrong.  I summarise below the Court’s reasoning

1. yes, an Office is free to decide that applicants should use only the wording of the Nice classification for their list of goods and services.

2. But there is nonetheless a requirement in the Trade Marks Directive – and all Offices and courts in the EU must adhere to this Directive- for clarity and precision in the language of all goods and services

3. Some of the Nice class headings are “in themselves” sufficiently precise and clear as to allow the competent authorities [ competent authorities means the Offices and the courts ] to determine their scope and protection.

4. Other class headings however do not meet the “sufficiently precise and clear” requirement where they are too general and cover goods and services which are too variable, ie it is not clear if they cover all or only some goods/services in that class.  The Court did not say which class headings were clear and which were not. The obvious example of a class heading which should qualify as sufficiently clear and precise as to cover the whole of the class is “articles of clothing; footwear; headgear” for class 25. It appears from what the Court is saying that “musical instruments” would not be sufficiently precise and clear to cover “music stands”.

5. Of the two ways in which class headings could be interpreted – literal or official policy – the Court did not accept official policy: “a situation in which the extent of protection conferred by the trade mark depends on the approach to interpretation adopted by the competent authority and not on the actual intention of the applicant runs the risk of undermining legal certainty both for the applicant and for third party economic operators”. Third party economic operators means those people who need to understand the scope of any registration when conducting searches of the register so as to know whether or not the mark they are interested in using would infringe its goods and services list.

6. As interpretation by official policy cannot be the right way, it is down to the application itself – not official policy- to make the intention of the applicant clear. And the Court went on to say “An application for registration which does not make it possible to establish whether, by using a particular class heading of the Nice Classification, the applicant intends to cover all or only some of the goods in that class cannot be considered sufficiently clear and precise”.

Please note that the Court does not go on to say that a list  which is not by itself sufficiently precise and clear can be transformed from an imprecise and unclear list into a precise and clear list by the filing of a statement with the application that the applicant intends to cover the whole class.  Otherwise, the aim of legal certainty could not be achieved, because the same words will mean different things depending on whether a statement of intention was filed or not. Example: the class heading of “musical instruments” would cover “music stands” if applicant A made a statement on filing his application that he intended to cover all goods in class 15, but if applicant B had made no statement, then for applicant B “musical instruments” would not cover “music stands”. WIPO was therefore quite right in its Notification No 23/2012 dated the 23 November 2012 to state that it does not allow international applications to include indications that use of any class heading is intended to cover all goods and services in any class.

How has OHIM reacted to the Court’s decision?

OHIM issued a New Communication, No 2/12. Put simply:

  • CTMs filed before 21 June 2012: OHIM interprets class headings according to its same official policy as prior to IP TRANSLATOR, despite the Court’s decision that the official policy is not the right way;
  • CTMs filed on or after the 21 June 2012: OHIM interprets class headings as per the Court’s decision, ie a literal approach. Merely claiming a class heading will not therefore guarantee a claim to all goods/services in that class, if on a literal interpretation of that heading it does not cover all of them.

21 June 2012 is not the date of the Court’s decision; it is the date of OHIM’s Communication No 2/12.

This leads to the very inconsistency which the Court was seeking to avoid. For example: a CTM filed on 19 June 2012 for only “musical instruments” will be held by OHIM to cover “music stands”. But a CTM filed only two days later on 21 June 2012 also for only “musical instruments” will be held by OHIM not to cover “music stands”.  Anyone searching the register must therefore now not only be aware of a practice note buried somewhere on the OHIM website, but also that OHIM imposes a different interpretation according to a date, arbitrarily selected by OHIM itself. None of OHIM’s Communications have the force of law; they are merely practice statements.

This inconsistency by itself demonstrates that OHIM’s 2/12 way of applying IP TRANSLATOR cannot be the right way. If OHIM were itself convinced that it was legitimately entitled to ascribe an intention to all applicants to claim more than is literally listed in their applications, OHIM would have announced that OHIM would continue to treat all CTMs – not just those filed before the date of its Communication 2/12 – using any class heading as covering all goods and service in that class. Moreover, despite the Court’s admonition that no list’s interpretation should depend on the official policy of any Office or court, OHIM has for CTMs filed before the 21 June 2012 done exactly what the Court said not to do: it has swapped its previous 4/03 official policy of “ any class heading covers all goods/services in that class” for a new official policy of “any class heading will be interpreted to cover all goods in that class if it was filed on or before 21 June 2012 because all applicants will be deemed to have intended any class heading to cover all goods/services in that class by virtue of OHIM’s previous official policy”.  This new official policy is therefore doubly wrong because a) it is an official policy and b) it relies on a previous official policy.  And if OHIM does believe that its 2/12 practice is right, why does it describe this practice elsewhere on its website as a merely “temporary solution”?  see this link http://oami.europa.eu/ows/rw/pages/CTM/FAQ/CTM13.en.do

What should owners of existing CTMs which claim only the class heading to any class do? It would be not safe to assume that these CTMs are all automatically covered for all goods/services in that class, even if dated before 21 June 2012, merely on the basis of OHIM’s new policy. As said above OHIM is not the only forum for interpretation of a class heading, and the courts – including any courts hearing an appeal from OHIM -will follow the Court’s decision in IP TRANSLATOR, and not OHIM’s Communication.

Could CTM owners of existing CTMs now amend their CTMs to add more precise and clear terms? For example, could a CTM owner apply to change “musical instruments” to “musical instruments, and music stands”? OHIM’s Communication 2/12 does mention the ability to part -surrender a CTM, but does so cryptically – “it remains possible to submit a restriction or partial surrender by adding a limitation to a general indication”. As “musical instruments” is the only item included in the heading to class 15, “musical instruments” must for a CTM filed on 19 June 2012 be a general indication, so it should follow that “musical instruments” is the general indication which is to be limited, because there is no other general indication. But “music stands” is not a limitation to “musical instruments”;it does not make the specification smaller, it merely serves to put on show what according to 2/12 is already deemed to be invisibly covered in any event. The width of “musical instruments and music stands” would if OHIM’s “any class heading before 21 June 2012 automatically covers all goods/services in that class” policy is right, be the same as “musical instruments”. So, if it is not a limitation but merely an equivalent, will OHIM allow it or not? This writer does not know.

Even if OHIM did allow it, a court – including a court hearing an appeal from OHIM – might well not interpret “musical instruments and music stands” to cover music stands in any event if the court thought to do so would be contrary to IP TRANSLATOR’s requirement for a literal interpretation of “musical instruments”. So, instead of making visible what was covered but previously invisible, the CTM owner has instead with the amendment merely achieved a mirage: “music stands” is visible but is not in truth covered.

This writer has no solution to offer; it will need another test case before any solution can present itself.

The person searching the register to check if his mark is going to infringe the rights of other peoples’ marks now has to be aware, in addition to the two OHIM policy points above, of a third point:  even when an CTM does expressly cover a particular item, he needs to check if it was added after the date of registration. If so, it might be a mirage.

Will the OHIM’s Convergence Programme – its project of reaching in collaboration with the national Offices an exhaustive list which distinguishes which of the class headings is sufficiently precise and clear as to cover all goods/services in their classes from those which are not, and augmenting the alphabetical list of the Nice guide with other goods and services not in it, such as retail services- – make the position any clearer? Possibly, but even with all the resources OHIM has at its disposal, this will take years to complete. Even then, just because OHIM verifies in some list kept on its website that a certain class heading is sufficiently precise and clear does not mean that a court is bound to follow what OHIM thinks. Moreover, there will never come a time when there will be a completely inclusive, totally exhaustive list of the way in which goods and services could be described; it is simply too big a project, and new technologies will always mean that a list will never be up to date (who 15 years ago would have thought that “online” and “download” and “electronic publications” would even be in a trade mark’s list, let alone become some of the most commonplace words to see on the trade marks register?).

What is the best advice to give anyone now considering applying for a CTM who wants, in addition to claiming his own goods and services, to take up the generous provision of being able to claim all the other goods/services in that class?

The best advice – as it always was, even before IP TRANSLATOR, to draft a bespoke list for his own goods and services, and then, if he wishes to avail himself of OHIM’s  claim the whole class generosity, list his own goods and services at the start of the specification and then add to the end i. the class heading and ii. “all goods/services included in the alphabetical list of the Nice Classification of this Class”. OHIM will then, on receipt of an application which has the words “all goods/services included in the alphabetical list of the Nice Classification of this Class” automatically change this wording to add in each and every entry in the Nice guide for that class

It would not be advisable for any client to rely solely on either or both i. and ii, to protect him because

a) as stated in IP TRANSLATOR, not all of the class headings are sufficiently clear and precise

b) the alphabetical list does not include all goods and services; for example, the alphabetical list for class 35 does not include “retail services” for all purposes; hence a literal interpretation of “all goods/services included in the alphabetical list of the Nice Classification of this Class” will still miss some of the goods/services in that class, which might be the very ones which the applicant needs

c) and even if the applicant’s own goods/services are in the alphabetical list on a literal interpretation of that list, the list was not literally in the application at the time it was filed, if OHIM only added the list later.  The appearance of his goods/services in the specification might be a mere mirage, like the one discussed above. Even if OHIM thinks they are in the specification, a court – including a court hearing an appeal from OHIM – might not do so

Perhaps however none should  avail himself of the ability to claim the whole alphabetical list for his class in any event, even if the OHIM make it oh so tempting to do so, because of OHIM’s new facility of ticking the box to add in the whole alphabetical list. This is because such a specification might in truth not meet the IP TRANSLATOR “sufficiently clear and precise requirement”. That requirement arose in IP TRANSLATOR in the context of a class heading not being clear and precise. But the Court’s decision does have a wider context. In particular, the Court stressed that the need for the sufficiently clear and precise requirement was for the legal certainty of third party economic operators, so that anyone searching the register would be able to identify the source of conflict; in this wider context, the requirement is for the applicant’s goods/services to be sufficiently clear and precise, not that everybody else’s goods/services should be clear and precise too, and a list which has so much in it that what the applicant wants is “lost” in the swamped-out effect of claiming everything else in the class, however clearly and precisely, is not in the spirit of what the Court wanted.


The introduction of the CTM system to run parallel with national trade mark systems has, rather than simplified and harmonised the trade marks laws of the EU countries, merely served, because of OHIM’s practices, to add layer on layer of complexity to those laws. The ideal of enabling business to be done more easily from one Member State to another by removing what had been perceived as an obstacle to trade, namely different trade mark systems in each country, is now even harder to achieve. This writer would urge OHIM to reconsider its reaction to the Court’s decision in IP TRANSLATOR, in an attempt to learn the wider lesson that the Court was teaching.

Claire Lazenby, January 2013