nice-classification-post-ip
1 May 2014TrademarksÁlvaro Pérez Lluna

Trademarks in the EU: Nice classification post IP translator

On June 19, 2012 the Court of Justice of the European Union (CJEU) delivered a ruling in Case C-307/10, known as IP Translator, requiring that the goods and services for which the protection of a trademark is sought are identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark.

The judgment has an impact on the classification practices of all the trademark offices in the EU, which have been working together to come to a common understanding on how to interpret the general indications of the Nice Classification headings and the requirements of clarity and precision to be applied to their respective classification practices. The Nice Classification system is a system of classifying goods and services for the purpose of registering trademarks, and the court ruling has led to an update on common practices dated February 20, 2014.

Knowing how each office deals with the implementation of the court’s ruling and how each office interprets the scope of protection of its own trademarks containing entire Nice Classification headings filed before or after the IP Translator judgment is crucial not only in the case of new trademark applications but also in correctly assessing the implications and chances of success in opposition/invalidation and infringement proceedings.

While use of the general indications of the class headings of the Nice Classification does not preclude identifying the goods and services for which the protection of the trademark is sought, an applicant for a national or a Community trademark that uses all the general indications of a particular class heading needs to know whether its application for registration will be interpreted as intended to cover all the goods or services included in the alphabetical list of that class, or not. Also, to be able to determine whether a trademark of a third party will be interpreted to cover such goods is of particular relevance when making decisions about the application, the risk of infringement or oppositions, and use of the new trademarks.

"The trademark offices of the EU have already reviewed all general indications of the Nice class headings and determined that 11 of them are not sufficiently clear and precise."

For example, the scope of protection of trademarks filed in Spain before, as well as after, IP Translator containing entire Nice Classification class headings will be interpreted literally by the Spanish Patent and Trademark Office (OEPM) and will not cover the entire class plus the alphabetical list of the relevant edition of Nice at the time of filing unless each of the terms in the alphabetical list is specified and listed individually.

By contrast, the scope of protection of trademarks filed with the Office for Harmonization in the Internal Market (OHIM) before IP Translator containing entire Nice class headings will be interpreted by the office to cover the literal meaning of the class headings plus the alphabetical list of the edition of Nice at the time of filing. Trademarks filed with OHIM after
IP Translator containing entire Nice class headings will be interpreted literally, and will not cover the entire class plus the alphabetical list of the edition of Nice at the time of filing unless each of the terms of the alphabetical list is specified and listed individually.

Also, the scope of protection of Community trademarks containing general indications of the Nice class headings will be interpreted by the OEPM literally, whether the trademark was applied for before or after IP Translator. OHIM will interpret the scope of protection of Community trademarks containing general indications of the Nice class headings as covering the literal sense of the class heading terms plus the alphabetical list valid at the time of filing when filed before IP Translator, but the terms of the class headings will be interpreted literally for Community trademarks filed after IP Translator.

These differences have implications for oppositions filed at each office, and whether such oppositions are based on Spanish or Community trademarks, as rulings will depend on whether the date of filing was before or after IP Translator.

OHIM will asses the scope of protection of national trademarks containing general indications of the Nice class headings, interpreting terms literally after IP Translator, unless the national office interprets the class headings to cover all goods and services in the class; in this particular case, the national trademark containing Nice class headings will be interpreted as covering the class heading on a literal basis, plus the alphabetical list of the Nice edition in force at the time of filing.

Finally, as a practical approach to filing trademarks that contain the entire class heading in Spain after IP Translator, it should be noted that for the applicant to obtain protection for the full alphabetical list, it is necessary for each of the terms to be listed individually. The same approach is also applicable to Community trademarks.

For the purpose of certainty and for public information, both the OEPM and OHIM will reflect the applicant’s intention with respect to the class headings and/or the alphabetical list for trademarks filed after IP Translator containing entire Nice class headings, by listing individually all goods and services applied for or registered, and not by simply making available a general reference to the applicable edition of the alphabetical list.

The trademark offices of the EU have already reviewed all general indications of the Nice class headings and determined that 11 of them are not sufficiently clear and precise, and consequently will not be accepted without further specification as of February 20, 2014, in the case of the OEPM or December 2, 2013, in the case of OHIM.

To conclude, the agreed interpretation is that a term does not provide a clear indication of what goods or services are covered when it simply states what the goods are made of, and not what the goods are, or what the services are, but not what is to be serviced.

Álvaro Pérez Lluna is a partner at DeMarks & Law. He can be contacted at: alvaroperez@demarks.es

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