Following the ruling of the Court of Justice of the European Union (CJEU), Geoffrey Hobbs QC has now given his decision on the appeal brought by the Chartered Institute of Patent Attorneys (CIPA) against the refusal of the Registrar of Trade Marks to register the word mark IP translator in the UK, based on the guidance given by the CJEU.


CIPA’s trade mark application for “education; providing of training; entertainment; sporting and cultural activities” in class 41 of the Nice Classification was originally refused by the UKIPO on the basis that such wording which consisted of the class 41 class heading could and should be interpreted to include all the services in that class. Since translation services is a sub-class listed in class 41 of the Nice Classification, the mark “IP translator” could not be registered because it was descriptive and there was no evidence that the mark had acquired a distinctive character through use in relation to translation services.

CIPA appealed and a reference was made to the CJEU.

The CJEU ruled that there is a legal requirement for the various goods and services covered by a trade mark application to be identified by the applicant with clarity and precision. In practice this means that an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the trade mark is sought must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

Current position

Geoffrey Hobbs QC has now applied the CJEU’s ruling and given his decision. In doing so, the original decision of the UKIPO to refuse the application was set aside and the application was remitted back to the UKIPO. A direction was also given that CIPA must confirm that the words of identification of the services for which it sought registration did not seek to cover anything which did not fall within the natural and ordinary meaning of those words as written and recorded in the application. The trade mark application will now be processed further by the UKIPO in the usual way.

If you wish to discuss any of the issues raised in this article please contact Simon Miles on 020 7691 4000 or simon.miles@edwincoe.com.

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