OHIM announces class heading breakthrough
Following the now almost infamous IP TRANSLATOR decision (Case C-307/10, June 19 2012), the Office for Harmonisation in the Internal Market (OHIM) has officially announced a breakthrough regarding the treatment of class headings.
A statement released on OHIM's website read:
“On the heels of the ABBC meeting in May 2013, OHIM is pleased to announce a major breakthrough in the Convergence Programme initiative on the Nice Class Headings Individual Terms.
This effort came about through the interest of national offices, BOIP and OHIM taking a harmonised approach in addressing the Court of Justice ruling in Case C-307/10, IP TRANSLATOR, that deemed certain general indications insufficiently clear and imprecise for classification, but did not specify which were classifiable and which were not.
In under a year, an agreement was reached which will result in the creation and publication of a Common Communication on the websites of all participating offices envisaged by the end of this year. This communication will clearly outline the initiative results and its influence on EU IP practices, as well when and by whom this common practice will be implemented. This implementation by the EU IP offices will happen on a voluntary basis.
OHIM would like to thank all national offices and BOIP, and the user associations involved for their dedication and commitment to realising this goal.”
By way of background, the IP TRANSLATOR decision centred on the use of class headings in Community trademark (CTM) applications. In particular, the case considered the precise scope of protection resulting from the inclusion of a class heading in a CTM application. The long-established OHIM practice was that a trademark registration which included a class heading as set out in the Nice Classification was considered to cover all of the goods or services included in that class. However, the validity of this accepted practice came under scrutiny following a referral from the appointed person in the United Kingdom to the Court of Justice of the European Union (ECJ) in 2010.
The decision that followed was long awaited and somewhat confusing. In response to questions raised by the appointed person, the ECJ placed the onus of deciding whether a specification of goods or services was sufficiently clear and precise for registration purposes back on the national offices. While this was considered by some to be avoiding the issue, OHIM’s intention to work alongside the national offices in finding a common practice was quickly made apparent. And true to their word, OHIM has now announced a breakthrough in relation to this desired common practice.
Although the precise details of the 'breakthrough' have not as yet been released, OHIM’s press release implies that some of the confusion and uncertainty surrounding the IP TRANSLATOR decision will soon be clarified. In an interview with Dimitris Botis, the Deputy Director for Legal Affairs, International Cooperation & Legal Affairs Department at OHIM in July 2012, Mr Botis highlighted the need for reconciliation between legal certainty and flexibility when addressing the issue of class headings. The publication of the common communication, envisaged for the end of this year, is therefore highly anticipated. It is, however, expected that the common communication will be along the lines of that set out in the OHIM Convergence Progress Report which was prepared for the User Group Meeting on April 22 2013.
This report clearly sets out the results of the initiative and indicates that a new common practice has been reached whereby 11 individual Nice Class heading terms are now commonly considered as being too vague for classification purposes. These eleven terms are:
Nice Class Heading Individual Term
Goods of common metal not included in other classes
Machines and machine tools
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes
Paper, cardboard and goods made from these materials, not included in other classes
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes
Leather and imitations of leather, and goods made of these materials and not included in other classes
Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
Treatment of materials
Personal and social services rendered by others to meet the needs of individuals
The OHIM press release states that the implementation of this common practice will be completed before the year end and on a voluntary basis. However, the Progress Report of the Convergence Programme initiative seems to imply that the implementation of this common practice will be a 'harmonised approach'. It is presumed that clarification on this point will be provided once the content of the common practice is confirmed.
Shauna Tilley, FRKelly, Dublin
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