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January 7, 2014

New Practice of OHIM for Community Trademarks

A trademark registration protects against third party use of similar marks in connection with the goods and/or services covered by the registration (the scope of protection of the mark). Goods and services are classified in 45 different classes according to the so-called NICE classification.  Each class contains a class heading which indicates in a general manner the fields to which the goods and services belong.

It has been the established practice of The Community Trademarks Office (OHIM) that a Community Trademark registration which covered a class heading covered all the goods or services which belonged in that class, and not just the goods or services specifically mentioned in the class heading. As an example, a registration covering the class heading in class 15, “musical instruments”, would be considered to also cover “music stands” in class 15 even if the latter goods are not mentioned in the class heading.

This practice has been changed as a result of the CJEU’s decision of 19 June 2012 in the ’IP-Translator’-case (C-307/10).

As a result of this decision OHIM will assess the scope of protection of Community Trademarks covering class headings differently depending on whether they have been filed before or after 21 June 2012.

Applications filed before this date are considered to cover both the goods and services mentioned in the class heading, and all the goods and services contained in the alphabetical list of the NICE classification for that particular class (the “musical instruments” + “music stands” example).

Applications filed after this date, however, will only cover the goods or services specifically mentioned in the class heading (e.g. only ”musical instruments”).

The decision in the ’IP-Translator’-case and OHIM’s new guidelines therefore may entail a considerable limitation of the scope of protection of Community trademark applications or registrations.

For all existing Community trademark applications and registrations Zacco recommends that you contact us for a review of your Community trademarks so that we can ascertain that you still have the necessary protection.

For all future Community trademark applications Zacco recommends that a specific list of goods and services be drafted which covers all the goods and services which you use or intend to use the trademark for.

Zacco recommends a regular review of the company’s trademark portfolio so as to ensure that the scope of protection corresponds with the current business strategy.

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