According to the Icelandic Trade Marks Act from 1903 trademark registrations of design marks covered all goods provided that a more limited coverage was not specified. Over the years gradual changes have been made in Icelandic Trade Mark Law defining and limiting the range of afforded protection granted by registrations.
Classification was introduced in 1968 when the Trade Marks Act No. 47/1968 stipulated that trademarks should be registered in certain classes according to a classification that was based upon the NICE Agreement. Class headings were translated into Icelandic on the trademark application form but no further translations were published such as of the alphabetical list. Iceland did not become a party to the NICE Agreement until 1995.
Owners of registrations frequently wish to obtain the broadest possible protection and therefore applications for trademark registrations were often filed for all goods/services in specified classes. This was convenient since specifications and/or translations could be avoided by filing for all goods/services until 1997. After the Trade Marks Act No. 45/1997 came into effect it was no longer possible to phrase a list of goods/services in that manner since the new Act included a prohibition against registrations covering whole classes without specifying the goods/services.
The Patent Office has however accepted class headings in applications after 1997. Consequently it has been considered that class headings present sufficient clarity regarding goods/services covered by each application/registration. Furthermore the Patent Office’s interpretation has been that those registrations are granted the broadest possible protection.
Currently between 54.000 and 55.000 trademark registrations exist in the Icelandic Trademark Register and many cover class headings. When considering trademark protection rendered by each registration competitors must for example consider the condition of Article 4 of the Trade Marks Act regarding similarity of goods/services.
Class headings are still accepted in trademark applications in Iceland but the ECJ ruling in the IP TRANSLATOR case could provoke a change. Such a change should be published in a clear manner and without retroactive effect in order to demonstrate a necessary respect for legal certainty and predictability.
The IP TRANSLATOR case will surely be discussed in Iceland. There is need for uniformity and further decisions can be expected from Europe. A recent decision from the General Court Present-Service Ullrich GmbH & Co. KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) T-66/11 since January 2013 for example concerned the range of afforded protection granted by a registration for the class heading in class 35. The use of general indications in class 35 before the enactment of the new communication from OHIM was understood as intended to protect all the services included in that class. The principle of legal certainty is respected in this decision.
It is tempting to criticise a recent Icelandic decision in this context. That decision was also made in January 2013 and more specifically it was made by the Icelandic Board of Appeal in case No. 1/2012 FACEBOOK Inc. v Sögubókin ehf. The motive behind the filing of the opposition in that case was the fact that the opposed mark sagabook (word and design) was registered for the class headings in classes 41 and 42.
The Patent Office rejected the opposition and in the reasoning it was confirmed that class headings have been deemed to provide the broadest coverage since 1997. In the Patent Office’s decisions it is thus directly confirmed that class headings “are broadest and cover all that might be considered to fall into each class.” Furthermore the Patent Office confirmed that “even if the applicant uses the mark for specific services the fact that the mark is registered for the class headings can not be ignored.”
The opposition was rejected due to other reasons and the case was then appealed to the Board of Appeal. The appellant hoped that the reasoning for similarity of the marks would be changed. On the other hand he did not expect a different decision regarding the actual protection afforded by the class heading of class 42.
The Board of Appeal however ignored the confirmation from the Patent Office regarding class headings and surprisingly based a decision on intended use of the opposed mark and use of the opponent’s mark. In other words the Board of Appeal did not evaluate or respect the actual coverage of a registration that has been registered and published for the class heading in the relevant class.
The decision from the Board of Appeal is regretfully not a contribution to the ongoing discussions in Europe or expected decisions in Iceland regarding class headings. The decision should however serve as a reminder regarding the obvious need for legal consistency and predictability relating to trademark protection.