In the July 2012 edition of this newsletter, we informed about the IP TRANSLATOR decision of the European Court of Justice (CJEU), whereby trademark applicants that designated all class headings in any given class could be understood to be including all goods in the Alphabetical List pertaining to that class, provided this was clear from the application. As a consequence, OHIM decided to allow "declarations" to be filed with Community Trademark (CTM) applications, referring to the Alphabetical List. These declarations have now been abolished, and instead OHIM automatically imports all goods from the Alphabetical List where applicants tick the corresponding box. This gives rise to further consideration of appropriate specifications in CTM applications.
The "declarations" referred to were only possible where all general indications in a class were listed. Even if only one was missing (or subsequently deleted), the reference to the Alphabetical List was not possible (or became obsolete). Moreover, OHIM encountered difficulties in publishing the reference to the Alphabetical List, as well as significant opposition from the part of the national offices in the EU Member States, who did not think the "declaration" was an appropriate means to broaden the specification of a trademark application or registration containing only the Nice headings.
As a result, OHIM decided to abolish the declarations. This change was implemented as of 22 October 2012.
Applicants who wish to obtain the broadest possible protection can now designate all general indications in a class and then tick a box referring to the Alphabetical List. As a result, OHIM will import all goods or services contained in the class in question into the application. While this is easy and straight-forward for the applicant, the consequences of this are very long and unwieldy applications and, accordingly, publications and registration certificates.
That said, where the general indications are sufficiently "clear and precise" as required by the CJEU in IP TRANSLATOR, they can still be relied upon to cover all goods or services that fall under them. The reference to the Alphabetical List, or additional terms, are really only necessary where goods or services should be covered that (arguably) do not fall under the class headings or where the class headings are too broad or vague.
In view of this development we now recommend drafting tailored standard specifications that cover existing and potential business interests in each class of goods or services, without referring to the Alphabetical List. These specifications can consist of Nice headings inasmuch as these are of interest, plus sufficiently defined sub-categories and possibly down to the specific items of interest, as the case may be. There is no one-size-fits-all.
Things will change again when OHIM and the national offices finalize their so-called "taxonomy" of goods and services with the "class scopes". These will be general definitions, similar to and inspired by the Nice headings, but agreed as being sufficiently clear and precise. We will advise further when these have become officially available, which should be during the first quarter of 2013.