On June 19 2012 the European Court of Justice handed down its ruling in the IP Translator case (C-307/10), concerning interpretation of the general indications of the Nice Classification class headings.
The court concluded that:
- the goods or services for which trademark protection is sought must be identified by the applicant with sufficient clarity and precision, so that on that basis alone, competent authorities and economic operators can determine the extent of the protection conferred by the trademark;
- the general indications of the Nice Classification class headings can be used to identify the goods and services for which trademark protection is sought, provided that such identification is sufficiently clear and precise; and
- the applicant of a national trademark which uses all of the general indications of a class heading must specify whether the application covers all goods or services included in the alphabetical list of that class or only some of the goods and services of that list. If the application concerns only some of those goods or services, the applicant must specify what these are.
In light of these findings, the Office for Harmonisation in the Internal Market (OHIM) issued Communication 2/12 on June 20 2012 concerning the use of class headings in lists of goods and services for Community trademark applications and registrations. The communication stated that OHIM would continue to accept the use of general indications of the class headings, provided that such identification was sufficiently clear and precise.
Since then, OHIM and EU member state national offices have been working together to reach an agreement as to the clarity and precision requirements in the description of the goods and services and develop common principles for their respective classification practices. In addition, they have been working to determine which of the general indications of the Nice Classification class headings are acceptable.
As a result of this collaboration, on May 2 2013 OHIM and the national offices published a common communication on the implementation of the IP Translator judgment. This communication consolidates the practices of each office when interpreting the scope of protection of national and Community trademarks containing general indications of headings of one or more class, before and after IP Translator.
With respect to the practice of the Spanish Patent and Trademark Office (SPTO) in relation to national trademark applications containing entire class headings filed either before or after IP Translator, the terms of such class headings will be interpreted literally by the SPTO.
Moreover, the SPTO allows the applicant for a trademark filed after IP Translator containing entire class headings to obtain protection for the whole alphabetical list by including each of the terms individually – that is, all goods and services must be specified in order to determine the scope of the application. The SPTO will reflect the applicant's intention in its register, publications and certificates by listing individually all goods and services applied for.
As regards the scope of protection of Community trademarks with general indications of the class headings, the SPTO will also interpret the terms of such headings literally. Therefore, to obtain protection for all goods or services of that class, each must be specified individually.
For its part, OHIM will interpret the scope of protection of national trademarks with general indications of class titles, depending on whether the trademark was filed before or after IP Translator. For trademarks filed after IP Translator, the terms will be interpreted literally; for earlier trademarks, OHIM accepts the scope of protection granted by a national office only if it does not interpret the class heading as covering all goods or services of that class. In such case the national trademark will be interpreted as covering the class heading on a literal basis.
Therefore, in the case of a Spanish trademark, both OHIM and the SPTO will always interpret the terms of the class headings on a literal basis, regardless of whether it was filed before or after IP Translator.
Further guidelines and instruments (eg, a harmonised list of general guidelines for acceptable goods and services in the sense of complying with the clarity and precision requirements) for implementation of the principles derived from the IP Translator judgment are still to come. Thus, European harmonisation in this field and legal certainty as to the scope of protection of trademarks containing general indications of class headings are expected to increase further.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.