Following the long awaited decision from the European Court of Justice in the famous “IP Translator”* case, the Community Trademarks Office OHIM has decided to change their practice on the use of class headings in lists of goods.
In short the decision states that:
- The specifications of goods should be expressed with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark.
- It is not precluded to use the general indications of the class headings of the Nice classification of goods and services.
- An applicant who uses class heading for identifying the goods/services for which protection is sought, must specify whether the application is intended to cover all goods or services of the relevant class or only some of the goods/services.
What does this mean for Community trade marks?
How the decision will be interpreted by OHIM depends on the timing of the filing or registration of the Community trade mark.
- For Community trade marks registered before 21 June 2012 which use all the general indications listed in the class heading of a particular class, OHIM will consider that the intention of the applicant was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.
- For Community trade mark applications filed before 21 June 2012 and which are still not registered, OHIM considers that the intention was to cover all the goods or services included in the alphabetical list of the particular class concerned, unless the applicants specify that they had sought protection only in respect of some of those goods or services in that class.
- For Community trade mark applications filed after 21 June 2012, the applicants must expressly indicate whether or not the intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class
The decision and the change in practice leave many open questions and do not make the scope of protection of a community trademark clearer.
For instance, the alphabetical list of classes has changed several times over the years, and a trade mark owner will need to be an expert on classifications in order to be able to determine what is covered and what is not covered.
On the other hand, Community Trademarks are vulnerable to cancellation due to non-use five years after their registration and you will only be able to uphold the registration in respect of the goods or services for which it has been used. Consequently, the difficulties concerning scope of protection will primarily emerge in connection with freedom-to-operate searches and conflicts with community trademarks which are not vulnerable to cancellation yet.
For further information contact any of our attorneys at law or trademark attorneys.