Change in the use of class headings in lists of goods and services for European Community Trademarks and European National Trademarks28 June 2012
The Court of Justice of the European Union (CJEU) issued on 19 June 2012 an important decision relative to the case IP TRANSLATOR C-307/10 which will affect, in the European Community, the identification of goods and services (according to the Nice Classification) protected by trademarks and which will reasonably also have an affect on the protection of trademarks already filed and/or registered.
Up to this date it was a common practice to indicate upon filing the general class heading of the goods and services of interest, which would be distinguished by the trademark to be filed.
As from the issuance of the decision (19 June 2012) it is necessary that an application indicates clearly and precisely the goods and services to be covered.
On 20 June 2012, the OHIM (Office for the Harmonization in the Internal market which is the authority handling European Community trademarks), has become the first authority to issue a communication following this decision.
Said communication contains indications relative to the adaptation of this new system and the handling of the European Community trademarks filed or registered before the entry into force of the decision.
In brief, with regards to the European Community trademarks filed or registered before 21 June 2012 and claiming the general class headings of the Nice Classification, OHIM will consider that the intention of the applicant was to cover all of the goods and/or services included in the alphabetical list of the requested class.
Whilst with regard to the European Community trademarks filed after the entry into force of the communication issued by the OHIM, therefore after 21 June 2012, the applicant must expressly indicate whether or not it is its intention to cover all of the goods and/or services included in the alphabetical list of the requested class or only some of them. In the latter case the identification must be clear and precise.
It is a recent ruling which will certainly raise many discussions relative to the practice and enforcement of the same from the national EU National Patent and Trademark Offices.
To this regard the OHIM will work closely together with EU National Patent and Trademark Offices so as to harmonize the application of the Nice Classification.
With specific regard to the Italian Patent and Trademark Office, no communication has yet been issued by the Authority.