By Trevor Little
June 20 2012
OHIM has speedily responded to yesterday’s Court of Justice of the European Union (ECJ) ruling in the IP TRANSLATOR case, repealing Communication 4/03 and clarifying the treatment of both existing Community trademark (CTM) registrations and pending/future applications.
As WTR reported in detail yesterday, the ruling addressed the issue of class headings, with particular relevance to Communication 4/03 (in which the president of OHIM announced that the use of language from the class headings of the Nice Classification to specify goods and services “constitutes a claim to all the goods or services falling within this particular class”). In the ruling, the ECJ stated:
“Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trademarks must be interpreted as meaning that it requires the goods and services for which the protection of the trademark is sought to be identified by the applicant 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."
“Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks… to identify the goods and services for which the protection of the trademark is sought, provided that such identification is sufficiently clear and precise."
“An applicant for a national trademark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trademark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.”
In response, OHIM has announced that Communication 4/03 has now been repealed and replaced by Communication 2/12, which will enter into force on June 21 2012. The communication states that, for CTMs registered before the new communication enters force (which use all the general indications listed in the class heading of a particular class), “the office considers that the intention of the applicant… was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made”. Similarly, for applications not yet registered before the communication takes effect, OHIM will consider that the applicant’s intention was to cover all the goods or services listed in the particular class, unless they specify that they sought protection only in respect of some of the goods and services.
Going forward, applicants that use all the general indications of a particular class heading of the Nice Classification “must expressly indicate whether or not their intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class”.
With respect the immediate impact of the ruling on applicants and mark owners, OHIM explained: “In accordance with the court’s ruling, the office is updating its filing systems to provide a user-friendly solution when using class headings to claim protection for all of the goods or services in the alphabetical list of the Nice Classification. This update is expected to be in place over the next few days. In the meantime, an interim solution has been implemented and is accessible via the office’s website.”
Looking forward, OHIM notes that the judgement stresses the importance of a harmonised practice on the classification of goods and services throughout the European Union, a project the Convergence Programme has already embarked upon: “OHIM, together with the EU national offices, will work within the framework of the existing Convergence Programme towards adopting a common practice on the acceptability of each of the general indications of the Nice Agreement class headings. With this in mind, a letter is being sent today to all of the national offices and a meeting has already been convened with them for next week to discuss the harmonisation of the classification of goods and services.”
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