On 20th of February was issued a Common Communication
on the Common Practice on the Acceptability of Classification Terms. The communication and the implemented change of practice is result of the issued on 19/06/2012 ruling of the Court in Case C-307/10 “IP Translator”, giving the following answers to the referred questions:
1 – Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;
2 – Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;
3 – 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 that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
This Judgment has an influence on the practice of all Trade Mark Offices of the European Union and in the interest of establishing certainty within the trademark system and for its users, calls for convergence on the interpretation of the general indications of the Nice class headings.
Two issues are clear from this judgment:
- The applicant should specify the goods and services of the trade mark with sufficient clarity and precision. This enables the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark, on the basis of the list of goods and services alone.
- The general indications of the class headings of the Nice Classification (class heading terms) can be used to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise. Following paragraph 54 of Case C-307/10 “IP Translator” this is not always the case for all general indications.
The common communication contains a set of 3 guidelines that describes criteria to determine the clarity and precision (or lack of such) of a term has been established.
The set of guidelines is the following:
- Explanation when a description of goods and services is sufficiently clear and precise
- Examples of factors that can add sufficient clarity and precision
Specification of terms in a number of classes
According to the Guidelines
- A description of goods and services is sufficiently clear and precise when its scope of protection can be understood from its natural and usual meaning.
- If this scope of protection cannot be understood, sufficient clarity and precision may be achieved by identifying factors such as characteristics, purpose and / or identifiable market sector*. Elements that could help to identify the market sector may be, but are not limited to, the followin
- consumers and/or sales channels
- skills and know-how to be used/produced
- technical capabilities to be used/produced.
III. A term may be part of the description of goods and services in a number of classes; it may be clear and precise in a particular class without further specification.
The implementation offices are: AT, BG, BX, CY, CZ, DE, DK, EE, ES, FI, FR, GR, HR, HU, IE, IT, LV, LT, MT, NO, OHIM, PL, PT, RO, SE, SI, SK, UKReported by:
