WHAT YOU SEE IS WHAT YOU GET!

Very few in the history of the Law of Trade Marks, have ever ventured into the onerous task of differentiating between the words – classification and specification. In fact, over the years, analysts have often found trade mark applicants to have filed for and/or obtained registrations of wordings comprised in the classification headings, instead of clearly identifying their goods or services. The same have more often than not been followed with claims of exclusivity over the entire classification itself. While there are some Intellectual Property Offices which acknowledge an approach of “class-heading-covers-all”, many more have always favoured a more literal approach with respect to words.

In general terms, by applying the principle of individuation, it may be contended that the basic difference between the aforesaid words is a need of precision and clarity. Pertinently, while Merriam-Webster Online English Dictionary explains that classification means a mere systematic arrangement in groups or categories according to established criteria , it has consciously defined specification only to be, inter alia, a detailed precise presentation of something .

Therefore, a question arises as to whether the vagueness of a classification heading can even become a tool for canvassing all goods and services falling within a particular class?

The law of the land in India, as well as in several other countries, in terms of the statute, have clearly specified that trade marks applications are required to be in respect of specification of goods or services and not otherwise. In fact, an avid reader is sure to notice that while the Trade Marks Rules, 2017 under Rule 20 requires the classification of goods and services to be based upon the NICE Classification, an application for the registration of a mark is clearly to be in respect of “specification of goods and services” as is mentioned under Rule 23 of the said Rules.

Moreover, the crucial yet often overlooked Guidance for the User in respect of the International Classification of goods and services (NICE classification)” published by the World Intellectual Property Organization (WIPO) itself states in point 2 that, “The class headings indicate in a general manner the fields to which the goods and services in principle belong. (emphasis added)”. Such statement further makes it clear that a claim for a class heading cannot equate itself to a specific claim for all the particular goods or services placed in a particular classification.

That being the case, it is also a situation that there is no express bar in the legal texts upon the use of terms comprised in the trade mark classification headings as wordings of goods and services in relation to a trade mark application. Thus, what happens if an entity applies for a classification heading? What does it actually cover at the end of the day?

On January 29, 2020, while the entire World was slipping through the cracks into a global pandemic, the Court of Justice of the European Union (CJEU) in the case of Sky Plc & Ors. vs. SkyKick UK Ltd. & Anr. (C-371/18) faced before itself a dauting task of filling the cracks of its earlier landmark judgment passed in the year 2012. The earlier landmark judgment in the IP Translator case, i.e., Chartered Institute of Patent Attorneys vs. Registrar of Trade Marks (C 307/10) , had not only changed the face of law in the European Union and but the European Parliament also found it necessary to promulgated a Regulation (EU) No. 2015/2424 to incorporate the ruling in the European Union Trade Mark Regulation (EUTMR) by virtue of an amendment through one Article 28(8) which, inter alia, made all specifications be deemed to cover only those goods and services which the literal meaning of the indications could encompass within their fold.

In the landmark decision of 2012, the CJEU had further, inter alia, held that all goods and services for which the protection of the trade mark is sought is required to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. However, the judgment interestingly did not preclude the use of NICE Classification headings in the specification of goods and services but instead made it mandatory for such identification to be sufficiently clear and precise and also required it to 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.

The IP Translator judgment of 2012 has generally been understood to mean to have upheld the “what you see is what you get” approach as far as the European Union is concerned. As it stands, it is now a settled position in the European Union (EU) that all trade marks containing class headings as its specification of goods or services will be interpreted according to the literal meaning of the words contained therein regardless of the filing date of such application.

However, the CJEU had failed to state as to how such clarity was to be given or whether a mark can actually be declared wholly or partially invalid on the ground that some or all of the terms in its specification of goods and services are lacking in sufficient clarity and precision. A crack remained!

Ironically, it took almost eight more years for the crack to resurface before the CJEU in the said Sky Plc & Ors. vs. SkyKick UK Ltd. & Anr. (C-371/18). Sky Plc being a UK Television Broadcaster and a cloud management software company had brought an action for infringement against SkyKick UK Ltd. and Anr. for use of the mark “SKY” in relation to downloadable software goods and other services etc. Faced with the infringement action, SkyKick UK Ltd. and Anr. decided to challenge the validity of the trade marks at issue itself in the main proceedings and contended that the trade marks relied by the Opposite Party were registered in respect of “computer software” which is not with sufficient clarity and precision and hence, is actually liable to be declared invalid under a reference to the IP translator case (supra).

The High Court of Justice (England & Wales), Chancery Division (United Kingdom), being conscious of graver implications, decided to refer, inter alia, the following questions to the CJEU for preliminary ruling:

(1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark?

(2) If the answer to question (1) is yes, is a term such as “computer software” too general and covers goods which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?’

In a meticulous interpretation of its earlier landmark judgment, the CJEU held that the judgment of 19th June 2012, Chartered Institute of Patent Attorneys (C307/10, EU:C:2012:361) cannot be interpreted as meaning that the Court intended to recognise additional grounds for invalidity, not included in the list in Article 7(1) and Article 51 of Regulation No 40/94 and Article 3 of First Directive 89/104. Consequently, lacking in clarity and precision was not held to be a ground to declare a trade mark as invalid. However, it was held that a mark is only capable of being protected in respect of the goods and services for which it has been put to genuine use and not otherwise.

Position now under Article 28(8) of EUTMR

A careful perusal of the recent judgment will show that the same has actually helped in growing the importance the ethos behind the enactment of such amendment. For example, while Class 24 may cover plastic coverings, a mere application for textiles and substitutes for textiles; household linen; curtains of textile or plastic, cannot be been deemed to mean coverings of plastic or plastic based substitutes for fabrics. This is precisely what the amendment has done. The EUIPO has even proceeded to publish a list containing examples of terms clearly not covered by the literal meaning of the respective class headings for the first time in its history and the same is extended the same from time to time.

In this situation, it now not only mandatory for every Applicant to research whether their specification wordings are sufficiently clear and precise, but to also take note of the excluded list (supra) and incorporate such wordings specifically if they are engaged in any such business Thus, for example, if a musical instrument manufacturer is also manufacturing plectrums or strings as well, it is now always advisable to make an application for musical instruments, plectrums and strings and not merely musical instruments. In simple terms, precision rather than vagueness is the need of the hour.

Conclusion

Thus, in conclusion, we may sum up that the aforesaid adjudications clearly highlight the importance for an Applicant to carefully consider and specifically identify which goods or services he/she wishes to protect. In fact, there are already jurisdictions such as Colombia, Portugal, South Korea and the United States of America that do not do not even permit class headings as part of any acceptable identification of goods or services. In fact, won’t it be weird to allow the simple presence of tobacco from the class heading to be deemed to cover e-cigarettes or vapes falling under the same trade mark classification?

Moreover, India being a signatory to international conventions and treaties such as the Paris Convention for the Protection of Industrial Property, the Madrid Protocol, the Berne Convention on Copyright and the TRIPS Agreement, has already narrowed down the gap between its laws and those of its European counterparts, including even procedural aspects. Thus, the changes happening in Europe will undoubtedly be reflected in some Indian judicial precedents sooner or later. In such circumstances, it is not only preferable but may also be prudent for an Applicant to be prepared to shun vagueness and make all its relevant goods visible in a specification. Else, the time may make you get only what you see! One is, however, always free to argue that the claim to covering of all the goods or services falling in a class (which can amount to thousands) did not even fall under logical parameters in first place.

Dipro Dawn

Having graduated from the Law School, Dipro joined the firm as a trainee with the Trade Marks team. He was soon made a part of the team who now advises clients in various sectors, irrespective of the size of the business. He is one of the active members in the trademarks opposition team who also handles cancellation actions from time to time. Besides, he often assists the litigation team in matters concerning all kinds of IP. He takes great interest in other research-related activities.

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