Trademarks in the EU: Nice classification post IP translator

The date of filing has different implications for Nice Classification class headings in different EU countries after the IP Translator ruling, as Álvaro Pérez Lluna explains.

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.