The IP TRANSLATOR case still has very concrete consequences in connection with the scope of protection of trademarks.
Last June, we commented on OHIM and national trademark offices of E.U. Member States trying and harmonizing their interpretation relating to protection and defense of trademarks filed or registered in connection with the Nice class headings.
It seems the first step of this harmonization program has been reached on November 20, 2013, with the publication of a Common communication on the common practice on the general indications of the Nice class headings. Among all goods and services listed in these class headings, trademark offices agreed to consider that eleven were lacking clarity and precision and thus were not to be accepted as such. They are listed herebelow in bold characters:
- In class 6, goods of common metal not included in other classes
- In class 7, machines
- In class 14, among precious metals and their alloys, goods in precious metals or coated therewith, not included in other classes
- In class 16, among paper, cardboard, goods made from these materials, not included in other classes
- In class 17, among rubber, gutta-percha, gum, asbestos, mica, goods made from these materials and not included in other classes
- In class 18, among leather and imitations of leather, goods made of these materials and not included in other classes
- In class 20, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
- In class 37, repair services and installation services
- In class 40, treatment of materials services
- In class 45, personal and social services rendered by others to meet the needs of individuals
This common position of E.U. trademark offices should enter into force in 2014 first quarter.
As a consequence, trademark applicants wishing to use the above-mentioned goods or services should amend and detail them carefully if they want to avoid ex-officio provisional or final refusals of their applications. Already registered trademarks should also be limited if their owners wish to oppose them to third parties.