Top of the class

Rules encouraging the use of more precise and clear wording in classifications have changed European trademark practice for the better, as Arlette Molenaar of Ploum Lodder Princen reports.

The EU trademark reform package aims to harmonise the EU trademark system. Following the IP Translator ruling in June 2012 and the subsequent “Common communication on the implementation of IP Translator” by the Office for Harmonization in the Internal Market (OHIM) and national trademark offices in 2013, article 40 of the trademark directive (2008/95/EC ) deals with the designation and classification of goods and services.

1. Paragraph 1 of article 40 of the directive reads as follows: “The goods and services in respect of which registration is applied for shall be classified in conformity with the system of classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957.”

This describes current practice and will not make a difference to trademark owners and practitioners that are already used to working with the Nice Classification. Tools such as OHIM’s TMClass, where terms accepted by OHIM and national offices (such as the UK’s, Ireland’s and Benelux) are jointly presented, make it easier for practitioners to select terms that will be accepted when seeking trademark protection in their home country and with expansion to other jurisdictions in mind. TMClass allows you to draft a description of goods and services which you will know in advance is likely to be accepted in various jurisdictions.

On the other hand, it may be difficult to determine in what class a certain product should be classified. This leads to discussions with examiners at trademark offices that have different views. It may even result in different classifications for trademarks of the same owner or different classifications in various countries.