When filing a trademark application, one must carefully determine what sign will be protected and what activities (goods and services) it will be protected for.
Many countries in the world have adopted what is usually referred to as the Nice Classification, which categorizes long lists of detailed goods and services into 45 classes, each of them summarized with a class heading.
In theory, applicants may then choose either to identify precisely every products and services for which protection is claimed or to identify the class headings corresponding to their future activities only.
But problems may arise due to the fact that member countries or trademark offices do not always implement the Nice Classification the same way.
In Europe for instance, trademarks designating class headings were not granted the same protection depending on the country they were registered in. In France, the INPI (French Patent and Trademark Office) considered trademarks were protected only in connection with precisely designated goods and services. For Community trademarks, the OHIM had a different opinion and used to agree that applicants filing their trademarks by designating class headings necessarily wanted to receive protection for all goods or services pertaining to these classes.
In Case C‑307/10, also known as IP TRANSLATOR Case (June 19, 2012), the Court of Justice of the European Union issued an important ruling on this very question of using and interpreting the Nice Classification.
The Court stated that:
– European regulations require “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”;
– This “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”;
– “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”.
After some hesitations in the past few months, European patent and trademark offices, and especially OHIM, have consequently adapted their practice to this new decision.
The statement proposed by OHIM since June 21, 2012, according to which the applicants, by designating the class headings, intended to cover all the goods or services contained within the cited classes, did not comply with International conventions.
As from now, applicants seeking protection for all goods or services categorized in one given class shall reproduce the alphabetical list of goods or services of such class.
No doubt that this will help everybody know easily and precisely the scope of protection of a trademark.
What about Community trademarks filed before June 2012 and designating class headings? If their applicants do not file complementary statements detailing for what goods and services protection was really claimed, they will be subject to decisions emanating from national offices or courts when examining the validity or the scope of protection of such trademarks, which could result in a few disillusions.