Following the IP Translator decision of the Court of Justice of the European Union (CJEU) of 19 June 2012, the Office of Harmonization for the Internal Market (OHIM) has changed its practice with respect to the requirements for the list of goods and services in Community trademark applications (Notice of the President No. 2/12).
The CJEU has stated in its decision of 19 June 2012 (case C-307/10) that only a few class headings of certain classes of the Nice Classification fulfil the requirement of clearness and definiteness. Therefore, it is necessary that applicants of a trademark express whether they want to claim protection for all goods and services in a certain class or not, if class headings are used in the application.
Following this decision OHIM determined that a mere declaration - that all goods and services in the respective class are covered by the application - meets these requirements. However, there was no requirement by OHIM to list all goods and services of the relevant class in the list of goods and services.
Following consultation with the national offices and due to the express wish of many applicants this practice has now changed. The class headings as well as the alphabetical list of the goods and services of the Nice Classification in the respective class will be published as part of the application, if the applicant declares all goods/services of the respective class to be part of the application. To make the application easier OHIM has implemented a tool into its e-filing system (as of 15 October 2012) that allows all class headings and all goods and services of the respective class to be included in the list of goods and services by just clicking a box.