Opinion of the Advocate General — ECLI:EU:C:2011:784
Date: 2011-11-29
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: United Kingdom

Summary of the Judgment 1. Approximation of laws — Trade marks — Directive 2008/95 — Identification of the goods or services concerned by the mark — Requirements of clarity and precision — Determination, by the competent authorities and the economic operators, of the extent of the protection conferred by the mark (European Parliament and Council Directive 2008/95) 2. Approximation of laws — Trade marks — Directive 2008/95 — Identification of the goods or services concerned by the mark — Use of the general indications of the class headings of the Nice Classification — Lawfulness — Conditions — Sufficiently clear and precise identification (European Parliament and Council Directive 2008/95) 3. Approximation of laws — Trade marks — Directive 2008/95 — Identification of the goods or services concerned by the mark — Use of the general indications of the class headings of the Nice Classification — Extent of the protection conferred — Obligation on the applicant to specify the goods or services to which the application relates (European Parliament and Council Directive 2008/95) 1. Directive 2008/95 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought 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. The entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. On the one hand, the competent authorities must know with clarity and precision the goods or services intended to be covered by a mark in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks. On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties. (see paras 46-49, 64, operative part) 2. Directive 2008/95 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise. It is therefore for the competent authorities to make an assessment on a case-by-case basis, according to the goods or services for which the applicant seeks the protection conferred by a trade mark, in order to determine whether those indications meet the requirements of clarity and precision. (see paras 55, 56, 64, operative part) 3. An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks to identify the goods or services for which the protection of the trade mark is sought must specify whether its 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. An application for registration which does not make it possible to establish whether, by using a particular class heading of the Nice Classification, the applicant intends to cover all or only some of the goods in that class cannot be considered sufficiently clear and precise. (see paras 61, 62, 64, operative part)