Trademark Law – European Union: New clarification requirements concerning the Community trademark’s specification of goods and services (01/2013)

The legal situation

Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003 concerning the use of the class headings of the Nice Classification provides in its Point IV:

‘The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this, the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.’

It was therefore common practice to enumerate all Nice Classification headings for the desired class when protection for all goods/services falling within this particular class was sought for by the Community trademark applicant. By application of this strategy, the Community trademark covered even those specific goods/services, which cannot be subsumed under the general indications of the class headings but which fall nevertheless within the same class.

Judgment of the Court of Justice of the European Union (CJEU)

In a decision of June 19, 2012 (C-307/10 – IP TRANSLATOR) the CJEU did not declare the aforementioned legal approach invalid in its entirety. However, the Court points out that the fact that the specification of goods/services covers all of the Nice Classification’s class headings for one or more classes is as such not sufficient to find that the respective trademark indeed covers all goods/services falling within this/these particular class(es). In para. 61 the CJEU 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)

These findings, made on the occasion of a preliminary ruling concerning the legal conformity of UK trademark law with the Directive 2008/95 to approximate the laws of the Member States relating to trade marks, can and will be translated to the Community trademarks’ legal framework. Applicants for Community trademarks thus have to adhere to this new clarification requirement.

Consequences for new Community trademark applications

When intending to cover all goods/services falling within a particular class, the applicant should not only enumerate all of the Nice Classification’s class headings for this class, but should add the clarification that the trademark shall cover all goods/services falling within this class.

It remains to be seen what legal issues and consequences will arise from this new judgment with a view to already registered pertinent trademarks whose specification of goods/services does not comprise the now necessary additional clarification. Concerning the application of the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark (Community Trademark Regulation, CTMR) by the Office for Harmonisation in the Internal Market it is very likely that the Office’s President will issue a Communication concerning the implementation of the CJEU’s decision in the near future.

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