OHIM explains use of international class headings

European Union

At the request of Community trademark owners, applicants and practitioners, the president of the Office for Harmonization in the Internal Market (OHIM) has clarified the OHIM's position on the use of the class headings of the Nice Classification in Community trademark applications.

Pursuant to Article 28 of the Community Trademark Regulation, the goods and services in respect of which a Community trademark registration is sought must be classified in conformity with the class headings of the Nice Classification.

Some national trademark offices within the European Union object to the use of class headings in applications as they consider them to be too general. In contrast, the OHIM has expressly stated in its communication that it believes that the use of general indications or international class headings constitutes proper specification of goods or services in an application. It will consider that the use of a class heading constitutes a claim to all the goods or services falling within that class, and that the use of a general indication constitutes a claim to all the particular goods or services falling under that general indication. The OHIM's logic is that because the 45 classes of the Nice Classification cover all goods and services, the general terms of each will cover any specific goods and services within a given class.

The effect of this approach on inter partes proceedings is that where a mark has been registered under a particular international class, any later application for goods or services in that class will be deemed to cover identical goods or services as the earlier mark.

With regard to use requirements, the OHIM will conclude that a mark has been used for all goods in a class heading even if it has only been used in relation to some of the goods set out in that class. Likewise, a mark registered for goods or services described in general terms will be deemed to have been used if use is shown for any goods or services falling within those terms.

This broad interpretation is at variance with the procedures of some national trademark registries, but is justified by the OHIM by the fact that the scope of protection of a mark is generally determined by the goods or services for which it has been used rather than those for which it is registered.

Chris McLeod, Hammonds, London

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