Top of the class

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.

1. Paragraph 2 reads: “The goods and services for which the protection is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.”

The terms ‘sufficient clarity and precision’ implement the IP Translator decision. This may sound easy: just describe your goods or services. However, in an increasing number of industries products and technologies will continue to be developed that today do not yet exist. How do you describe such goods or services with sufficient clarity and precision? How do you make sure your trademark still covers future products without being too vague?

The ‘means-what-it-says-approach’ aims at more clarification, but in practice examiners at trademark offices often refuse to accept products or services that they do not know or understand. In some jurisdictions, such as the US, examiners tend to only accept wares that are mentioned in the US Patent and Trademark Office’s trademark identification manual. It takes perseverance to make examiners accept unusual or unknown wording.

1. According to paragraph 3: “For the purposes of paragraph 2, the general indications included in the class headings of the Nice Classification or other general terms may be used, provided that they comply with the requisite standards of clarity and precision.”

Class headings may still be used and are still accepted. However, it is advisable also to add more specific terms to better describe the relevant goods and services. Class headings can be combined with more precise and clear wording to create broad protection.

In many jurisdictions it is possible to designate all wares that are mentioned in the alphabetical list of the Nice edition. But designating all the goods in a certain class will result in very long descriptions that inevitably contain non-relevant items. This will increase the chance of unnecessary oppositions or objections by third parties. Drafting a balanced class description covering all current and future goods and services can be challenging but is a better option than simply ‘ticking the box’ to designate every product possible.

However, beware becoming too specific in your chosen wording: in the first five years of a trademark’s lifecycle no use needs to be shown in EU opposition proceedings. As a result, during the first five years it would be possible to act against other companies based on the broad wording of the classification.

1. Paragraph 4 states: “The office shall reject the application in respect of terms which are unclear or imprecise if the applicant does not suggest an acceptable wording within a period set by the office to that effect.”

As mentioned above, views on what is clear and precise can differ between examiners and practitioners, leading to discussions and sometimes unsatisfactory results. The examiners ultimately decide what is acceptable wording. Practitioners may decide to accept a suboptimal description, thinking that when it comes to enforcing trademark rights the concept of similarity of goods and services will serve their case.

1. According to paragraph 5: “The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.”

It is clear that goods that fall into a certain class but are not mentioned in the class headings (a well known example is software in class 9) are not protected under the directive. For EU trademarks this is a change of practice. If a trademark owner wishes to rely on such products in opposition or infringement proceedings it is recommended that, before filing the action, the owner further specifies the goods and services to be relied on.

“Discussions about vague terms in opposition proceedings will become less frequent because for new trademark applications trademark offices no longer accept unclear items.”

Existing registrations can be restricted at the request of the owner. If a registration contains a term that is insufficiently clear and precise, a trademark office will allow a restriction to goods or services if it covers the natural and usual meaning of that term.

Of course this may lead to discussions with examiners who believe that a further specification is an extension of the goods covered, rather than a limitation. Article 28(8) of the trademark regulation (207/2009) could prove a useful tool. However, this stipulation has not been included in article 40 of the directive.

Instead of restricting current trademark registrations, keep in mind that it can also be a possibility to file fresh trademark applications containing more precise wording. If you were planning on seeking additional trademark protection for new classes (because a product line has been extended), consider re-filing existing classes for the new application as well. The wording will then be up to date while a new trademark registration is obtained, for which no use has to be proved in opposition or infringement proceedings.

Discussions about vague terms in opposition proceedings will become less frequent because for new trademark applications trademark offices no longer accept unclear items.

1. Says paragraph 6: “Where the applicant requests registration for more than one class, the applicant shall group the goods and services according to the classes of the Nice classification, each group being preceded by the number of the class to which that group of goods or services belongs, and shall present them in the order of the classes.”

This paragraph is seen by some as unfriendly to small and medium-sized businesses that are not familiar with filing trademark applications. However, trademark offices are usually cooperative and often suggest reclassification into more appropriate classes.

1. Paragraph 7 reads: “Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.”

There is no change of practice here, as this principle has been widely accepted and applied both in case law and in practice.

It can be concluded that article 40 of the directive clarifies the current practice and lays down rules that encourage use of more precise and clear wording in classifications. This is good news for trademark owners and practitioners. When conducting an availability search it is more straightforward to assess the risks when it is clear what the intentions of a trademark owner were at the moment of filing.

With clear descriptions it is easier to recognise and to avoid possible conflicts. The trademark registers will feel less cluttered when classes are well specified, thereby offering more opportunities for coexistence between trademarks.

Article 28 of the regulation is the same as the seven paragraphs of article 40 of the directive. In this respect harmonisation has been reached. However, article 28 contains an eighth paragraph that does not appear in article 40. This element is therefore not harmonised.

Article 28(8) reads as follows:

“Proprietors of European Union trademarks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class of the edition of the Nice classification in force at the date of filing.

“The declaration shall be filed at the office within six months from the entry into force of this regulation, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor’s intention. The office shall take appropriate measures to amend the register accordingly. This possibility is without prejudice to the application of article 15, article 42(2), point (a) of article 51(1) and article 57(2).

“European Union trademarks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.”

As mentioned above, harmonisation has not been reached concerning previously registered trademarks. According to article 28(8) a separate declaration describing the goods and services covered must be filed. This means that specific items can be added to the description if they fit into the current description. This would be attractive for trademarks where a discussion is expected about whether they fit into the description used.

However, this provision has not been included in the directive. Therefore, with respect to old registrations, trademark owners and practitioners are still stuck with current national practices. These national practices are listed in the IP Translator common communication. This is a missed opportunity in the directive as national practices vary a lot. On the other hand it allows for strategic enforcement: depending on the scope of protection of both national and Community trademark registrations, one can choose which trademarks to rely on in opposition proceedings.

European trademark practice has changed due to rules encouraging use of more precise and clear wording in classifications. This is good news for trademark owners and practitioners: easier clearance searches, more clarity in opposition proceedings and more opportunities for coexistence agreements. It remains a challenge to fit new and innovative products and services into classes in a sufficiently clear way.

Arlette Molenaar is senior trademark attorney at  Ploum Lodder Princen in Rotterdam. She can be contacted at: a.molenaar@ploum.nl