UNITED KINGDOM—TRADEMARKS
NICE AND SIMPLE: THE IP TRANSLA
TOR CASE
Francis Preedy Hallmark IP
UK—
The purpose of trademarks is to identify the goods or services offered by a party and to differentiate those goods or services from those of others. A trademark assists both parties in a trade and enables prospective customers to identify what goods or services are offered by a particular party. This makes it reasonable to assume that only one party can use a particular trademark for a particular purpose. To allow otherwise would counteract the very purpose for which a trademark is employed.
If only one party can use a particular mark, how should that use be defined, and how broadly should the rights of a trademark extend? For example, a company decided to use the term Polo for mints. Should its rights to Polo be restricted to that single good, or should that company be able to prevent another company from using Polo for clothing, or for cars? This shows that it is sensible to allow a particular individual, company or party to secure rights to a trademark, but that it is also sensible to limit the goods or services that a trademark can cover.
Limiting the goods or services that a trademark can cover requires definitions for both the trademark itself and the goods or services that it covers. This benefits those that provide the goods or services and their customers, because those in a trade will be able to find out whether a trademark is free and they will be able to prevent others from using it.
The Nice Classification system, an international standard for trademark goods and services, is now in its 10th edition (the 10th edition became effective within the EU on January 1, 2012). It has 45 classes (31 for goods and 11 for services) that a trademark can be registered for and it is used in many countries such as the UK, the US and China, as well as in the EU. Each class has a heading and a list of goods or services that the class covers. For administrative purposes, to facilitate registration and to enable searching for existing rights, which may affect the choice of trademark, a system such as the Nice Classification is sensible.
248 World Intellectual Property Review e-Digest 2012 IP Translator
In the UK, it is still unclear what rights a party actually gets when it registers a trademark. To test this, the Chartered Institute of Patent Agents (CIPA) brought a test case to the UK Intellectual Property Office (UKIPO) in 2009. It applied to register IP Translator as a trademark in class 41, which covers “education; providing of training; entertainment; sporting and cultural activities”, according to its heading, and it includes translation in its list of services.
In its trademark application, CIPA included the entire class heading as the specification of services that the trademark should cover. The fact that the class heading was used as a specification meant that the UKIPO had to decide whether it should follow its normal practice, which was to register a trademark for only the goods or services that are listed in a specification and for which there is no doubt that rights are sought, or whether it should follow the guidance of the president of the Office of Harmonization for the Internal Market (OHIM), who had just issued communication No. 4/03, which stated that use of a class heading as a specification is a claim to all the goods or services within that class.
This put the UKIPO in a difficult position. On the basis of the president of OHIM’s guidance, it found that IP Translator was descriptive of translation services within the scope of class 41 and it rejected the application on absolute grounds.
As mentioned above, class 41 covers “education services, training services, entertainment services and sporting or cultural activities”. It is not entirely obvious whether any of those cover translation services. The problem is that, according to the Nice Classification, translation services do fall under class 41. If OHIM’s guidance is correct, translation services are covered by an application filed in respect of the class 41 heading in its specification and it will be registered as such.
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