Budapest
29 June 2017
Reporter: Mark Dugdale

IP Translator fails to be understood


Efforts at the Court of Justice for the EU (CJEU) to untangle the codification of 2012’s IP Translator judgement are far from over.

Two cases currently with or recently ruled upon at the CJEU, Cactus (C‑501/15 P) and Brandconcern (C‑577/14 P), appear to have interpreted the IP Translator judgement differently than was intended, sparking some uncertainty for trademark owners.

Following the IP Translator case and its codification in the EU trademark legislative reform package, applicants must file in specific goods and services, indicating with sufficient clarity and precision what they aim to protect.

The new Article 28(8) of the EU Trademark Regulation allowed a period of six months for trademark owners to add new products/services to their EU trademarks filed before 22 June 2012.

Cactus and Brandconcern, however, have indicated that IP Translator does not apply to trademarks that had been registered before the date of the judgement.

According to Sarka Petivlasova, senior associate at Hogan Lovells, the CJEU’s February ruling in Brandconcern indicated that IP Translator has no retroactive effect, meaning that trademarks registered before 21 June 2012 cannot be amended.

The CJEU also seemed to suggest that EU trademarks can protect goods and services outside of the literal meaning of the included class headings.

Cactus, while still under consideration, has received a preliminary opinion from the advocate general, who went one step further and said EU trademarks could potentially cover all goods and services that fall within the class concerned.

As the advocate general noted in Cactus: “Consequently, Brandconcern does not constitute an authority validating [the EU Intellectual Property Office’s] approach … in relation to the assumption that a trademark registered before the cut-off date of 21 June 2012 can at most afford protection to the goods or services mentioned in the relevant alphabetical list.”

“By the same token, Brandconcern should not be read as precluding, from the outset, that protection afforded by trademarks registered before the judgement in IP Translator was given could extend beyond the goods and services referred to in the alphabetical list of a given class.”

Petivlasova added: “It remains to be seen whether the advocate general’s opinion in Cactus will be followed.”

More trademarks news
The latest news from IPPro The Internet
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Man sentenced for fake airbag sale
23 February 2018 | London | Reporter: Barney Dixon
A man has been sentenced to 10 months in prison, suspended for 12 months, for selling counterfeit airbags
INTA marks key 2017 achievements in annual report
21 February 2018 | New York | Reporter: Barney Dixon
INTA has highlighted its key achievements in 2017, including ever-increasing membership and a “record-breaking” annual meeting, in its 2017 annual report
Man fined more than £500,000 for counterfeit selling
16 February 2018 | Stafford | Reporter: Barney Dixon
A man who bought counterfeit DVDs from China and sold them as genuine products on eBay has been fined £567,000 following 16 months of imprisonment
EIP hires trademark head
13 February 2018 | London | Reporter: Barney Dixon
Intellectual property law firm EIP has hired Claire Lehr as head of its trademark practice
Comerica Banks wins UDRP
01 February 2018 | Geneva | Reporter: Barney Dixon
Comerica Bank has won a UDRP dispute at the World IP Organisation Arbitration and Mediation Centre
Three-quarters of brands suffer trademark infringement
22 January 2018 | Boston | Reporter: Barney Dixon
Almost three-quarters of brands have been victims of trademark infringement in the past year, according to a new survey from trademark research and protection firm CompuMark
TWiT sues Twitter for trademark infringement
18 January 2018 | California | Reporter: Barney Dixon
TWiT.tv, is suing Twitter for breach of contract, unfair competition and trademark infringement, stemming from a deal the two companies made in 2007