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IP translator – what have we seen in practice?

31st May 2013

There has been much discussion regarding the Court of Justice of the European Union (CJEU) judgment in Case C-307/10, Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP TRANSLATOR), a case well known within the IP profession. This blog examines some of the issues the decision has created for trade mark applicants and owners.

IP Translator In Practice

The practical effect of the IP Translator decision, as it is currently interpreted, is that applicants who wish their trade mark application to cover goods or services not covered by the literal meaning of a particular Nice Class Heading will need to specify those goods in their application either explicitly or through an express indication that they wish to use the entire alphabetical list of a Nice Class, such as a declaration or “tick box”. This ensures that all goods covered by an application are included in the application itself, a significant improvement in bringing clarity to trade mark applications. However, the use of the entire alphabetical list of a Nice Class brings its own challenges for trade mark owners and opponents alike.

For the applicant, the use of the alphabetical list increases the chances of objections being raised by the Office or opposition proceedings being filed against the application prior to registration. Such objections will significantly increase the time and cost of a trade mark application. The use of the alphabetical list will also increase the chances of cancellation or infringement proceedings being filed in later years, especially after the five year grace period for non-use, as in many cases the mark will not have been used on all of the goods or services included in the specification. This decreases the certainty that a registration can be relied upon as a defence to infringement proceedings.

For third parties, the increased length of the specification combined with the fact that the specification may give no indication of the goods or services of real interest to the applicant can be extremely frustrating. Specifications as diverse as “acid hydrometers, breathing apparatus for swimming underwater, bullet-proof vests, computer software, telephone wires, and traffic cones”, which all fall within the class 9 alphabetical listing, mean that third parties are being put to more time and expense in researching the applicant to determine whether there is any likelihood of a conflict in practice.

Furthermore, the alphabetical list of the Nice Classification often duplicates the same goods in slightly different terminology. For example, the alphabetical list for the class 9 specification covers:

  • Asbestos clothing for protection against fire.
  • Clothing for protection against fire.
  • Clothing for protection against accidents, irradiation and fire.
  • Garments for protection against fire.
  • Shoes for protection against accidents, irradiation and fire.

For a trade mark owner with rights in fireproof clothing, attempting to find these different terms within the other 700 entries for class 9 is time consuming and there is a high risk that at least one of these terms will be missed. It is even more frustrating when the trade mark applicant is a computer software company with no commercial interest in fireproof clothing at all!


In view of these potential issues, we recommend that applicants carefully consider whether the use of the alphabetical list is necessary or warranted in a new trade mark application. In most situations it is advisable that the applicant takes the time to determine and specify the goods and/or services of interest to them. This will ensure that suitable protection is obtained and the unnecessary delays and cost of complications caused by large and duplicated specifications are avoided.

June 2013 Update

As has been widely reported, the IP Translator judgment states certain general indications used in the Nice Class Headings were not sufficiently clear and precise for classification purposes. However, it did not specify which of the general indications this applied to. OHIM has been working with the National Offices of the European Community to create a harmonised approach to determine which of the general indications are acceptable for classification. OHIM has today announced that they hope to put out a “Common Communication” on this issue by the end of the year. The implementation of this common practice will be voluntary, so it remains to be seen how harmonised the National Offices will be on this issue.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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