Major change to classification examination to come into force

The Manual of Trademark Practice, which is used to set out the standard practice and guidelines followed by the Office for Harmonisation in the Internal Market (OHIM) in the handling of Community trademarks (CTMs), will introduce a new standard practice for examination of classifications from November 25 2013.

The changes are in light of the well-known and publicised decision in IP TRANSLATOR (C-307/10), which sought to clarify the interpretation of protection when using class headings. Since this time, consultations have taken place between OHIM and the EU national offices to review each of the 196 general indications used within the Nice Classification class headings in order to assess their acceptability for classification.

The result of the consultations is a confirmed list of 11 general indications which, as they stand, do not follow the requirements for “clarity and precision” as laid down in the IP TRANSLATOR decision. Therefore, if these 11 general indications are used, they must be further defined to indicate the intended goods or services in order to be accepted. The remaining 186 general indications were found to be acceptable for classification, so are terms which can be used alone without need for further definition. Exact details of which general indications are or are not acceptable as they stand are set out clearly in the Manual of Trademark Practice.

In line with the above changes, OHIM will also change its practice on the use of “all goods/services in this class/alphabetical class list” or such similar indications in specifications. Since IP TRANSLATOR, use of this indication has increased, but from November 25 use of any such wording will no longer be accepted. This could result in only the goods or services listed along with the phrase being considered, or the application itself being rejected if no other classes/goods or services are listed.

These changes are a welcome move toward ironing out the various classification issues and confusion IP owners and practitioners have experienced over the last year. However, it is going to be some time yet before we hear the last of IP TRANSLATOR and the ensuing classification issues which arose.

Wendy Oliver, D Young & Co, Southampton