Class Headings Lost In Translation

The Advocate General of the CJEU has indicated that the long established practice at OHIM to accept CTM applications on the basis of class headings is potentially illegitimate, which could significantly impact a large number of existing CTMs in all aspects, from enforcement and oppositions to invalidity and revocation proceedings.

The Opinion was given in case C-307/10, (the "IP TRANSLATOR" case), concerning the use of class headings from the Nice Classification to identify goods or services in a trade mark application or registration. In a test case, CIPA had applied and failed to register "IP Translator" as a UK trade mark for class 41 on the basis that this mark is descriptive, since class 41 includes translation services. On appeal, the Appointed Person stayed proceedings and referred questions to the CJEU to ask them to determine with what degree of precision goods or services need to be identified in a trade mark application, and in particular, whether the