PTO abolishes 'class heading covers all' approach

The Bulgarian Patent and Trademark Office (PTO) has changed its approach to interpreting the scope of protection of trademarks when class headings are used in lists of goods and services in trademark applications and registrations.

As of March 1 2013, national trademarks will not be registered under the 'class heading covers all' approach, but under the 'means what it says' approach, meaning that national trademark applicants using class headings will have to clearly indicate whether they are seeking protection for all goods or services that fall within a particular class, or only for specific goods or services mentioned in the class heading.

The change follows the June 19 2012 decision of the Court of Justice of the European Union in the IP TRANSLATOR ‘class headings’ case (C-307/10), following which all national PTOs in the European Union and OHIM agreed to unify the approach.

Eighteen PTOs in the European Union now use the 'means what it says' approach, while the remaining PTOs used the 'class heading covers all' approach, where the class heading provides protection for all goods or services included in the alphabetical list of the class.

The differences in interpretive approaches have led to legal uncertainty and a lack of predictability in cases where a party claims priority and seniority, and in revocation, cancellation, examination and opposition proceedings.

The Bulgarian PTO has introduced the following basic rules:

• If the applicant wishes the scope of trademark protection to cover all goods and services included in the alphabetical list of a particular class, it must explicitly state that “the application refers to all goods/services included in the alphabetical list of this class”.
• If the applicant does not explicitly state that the scope of protection covers all goods and services in the alphabetical list of the particular class, the PTO will conclude that the applicant is seeking protection only for the goods or services mentioned in the class heading.

This change in practice will not affect trademark applications and registrations filed or processed prior to March 1 2013.

Petia Petrova, PETOŠEVIĆ, Sofia