Trademark Law – UPDATE – European Union: New clarification requirements concerning the Community trademark’s specification of goods and services (07/2012)

“IP-TRANSLATOR” judgment of the Court of Justice of the European Union (CJEU)

As reported in our Newsflash 2/2012, in its “IP-TRANSLATOR” decision (judgment of 19.6.2012, C-307/10) the CJEU established a new clarity requirement for the specifications of goods/services of Community trademark applications covering all of the general indications from the heading of a particular class of the Nice Classification. In para. 61 the court states:
“(…) in order to respect the requirements of clarity and precision (…), an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended 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.” (emphasis by the author)

Communication No 2/12 of the President of the Office for Harmonisation in the Internal Market (OHIM)

In his Communication No 2/12 of 20.6.2012, which entered into force on 21.6.2012, OHIM’s President now laid out what consequences OHIM will draw from the “IP-TRANSLATOR” decision.
Regarding Community trademarks registered or Community trademark applications filed before the entry into force of Communication No 2/12, OHIM, OHIM will consider that the intention of the proprietor/applicant was to cover all the goods/services included in the alphabetical list of the particular class in the Nice Classification’s edition in force at the time of the filing of the trademark application.
With a view to Community trademark applications filed as from the entry into force of the Communication, the applicant must expressly indicate whether or not his intention is to cover all the goods/services included in the alphabetical list of the particular class or only some of those goods/services.

Consequences for new Community trademark applications

If the applicant wishes that his mark should cover all goods/services of the Nice Classification’s alphabetical list for one particular class, the mark’s specification of goods/services for this class should list all of the general indications of the Nice Classification’s heading for the class followed by a clarification such as “…as well as all further goods/services falling in this class”.

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