Breaking news: UK IP TRANSLATOR appeal ruling published

Yesterday Geoffrey Hobbs QC signed off on his keenly-awaited appeal decision in the application of the Chartered Institute of Patent Attorneys (CIPA) to register the words IP TRANSLATOR as a United Kingdom trade mark for ‘education; providing of training; entertainment; sporting and cultural activities’ in Class 41 of the Nice Classification.  To remind readers of the original issue, which has now been a little lost from sight: although translation services are not mentioned in the Class 41 heading, 'education; providing of training; entertainment; sporting and cultural activities', they are listed as a subheading. On the basis that you can't register IP TRANSLATOR for translation services, since the words are descriptive and probably non-distinctive too, are you not therefore able to register those words for 'education; providing of training; entertainment; sporting and cultural activities' alone on the logic that all sub-classes are covered by the terms that describe the class headings?

The history of this trade mark application has been extensively covered by this weblog over the years (you can get a long list of IP TRANSLATOR Katposts by clicking here). Suffice it to say that, in his decision yesterday (not yet on the UK  Intellectual Property Office website, but you can read it in full here), Geoffrey Hobbs QC applied the ruling of the Court of Justice of the European Union (CJEU) in Case C-307/10. On doing so, he allowed CIPA's appeal, setting aside the original decision and remitting it for further examination. CIPA was ordered to confirm that the words of identification of the services for which it sought registration do not seek to cover anything that does not fall within the natural and ordinary meaning of those words as written and recorded in the application, and the Registrar was told to consider whether any part of the verbal formula describing those services fails to identify those services with the requisite degree of clarity and precision.

That's the bottom line.  However, there's plenty of interesting material in the 17-page decision for the trade mark connoisseur to ponder.  For one thing, Geoffrey Hobbs QC took issue with the approach taken by the General Court in Case T-66/11 Present Service v OHIM, Pont-Nou (babilu/babidu), as to how ambiguities caused by the use of class headings as descriptors can be resolved by the use of 'off-the register' explanations and practice statements. He also saw no reason to make a further reference to the CJEU for any more preliminary guidance.

This weblog hopes to bring a fuller analysis and discussion of this decision soon.

A katpat to the ever-helpful Michael Edenborough QC, who appeared on behalf of the successful appellant.