Common Communication on the Common Practice on the General Indications of the Nice Class Headings

OHIM's Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.0 is published this morning. Its introduction explains as follows:

On 19/06/2012 the Court delivered its ruling 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. Without prejudice to the fact that each Office is bound by its national legislation, national court decisions and, in some cases, previous communications, it is recognised by all that it is only through collaboration in implementing this Judgment in a harmonised manner will there be legal certainty both for the competent authorities and the economic operators.

As regards the first question, the Trade Mark Offices of the European Union are working together to establish a common understanding of the requirements necessary to achieve clarity and precision in the identification of goods and services in an application for registration and to develop a common set of criteria which will be subject of a subsequent common communication.

As concerns the second question, the Trade Mark Offices of the European Union have already reviewed all general indications of the Nice class headings in order to determine which indications are sufficiently clear and precise. This review has determined that the 11 general indications detailed below are not clear and precise, and consequently cannot be accepted without further specification. The remaining general indications are considered acceptable. Further, the reasons why each of the 11 non-acceptable general indications of the Nice class headings are not found clear and precise have been agreed.

Implementation will take place within 3 months of the date of publication of this Common communication. In exceptional cases this period can be extended for another 3 months. The Offices have agreed that the judgment should not have a retrospective effect requiring that the register be changed ex officio with respect to registrations that contain one or more of these non-acceptable 11 general indications prior to the implementation of this communication.

Tools such as TMclass are available to assist in searching for and identifying acceptable terms.

As regards the third question, the "Common Communication on the Implementation of 'IP Translator'" provides an overview on how Trade Mark Offices of the European Union deal with specific topics relating to the implementation of this Judgement.

The Trade Mark Offices of the European Union reiterate their commitment to continue to collaborate in the context of the Convergence Programme, further increasing transparency and predictability for the benefit of examiners and users alike.

The document then continues with a three-and-a-half-page review of acceptable and non-acceptable general indications of the Nice class headings, picking out 11 in particular which are not regarded as acceptable.

You can read the text in full here or download it here. 

There is also a document entitled Common Communication on the Common Practice on the General Indications of the Nice Class Headings, v.1.1, which contains tabulated schemes to show 

(i) Trade marks filed before IP TRANSLATOR containing entire Nice class headings: interpretation by the Office of the scope of protection of the class headings of its own trade marks;

(ii) Trade marks filed after IP TRANSLATOR containing entire Nice class headings: interpretation by the Office of the scope of protection of its own trade marks; 

(iii) Trade marks filed after IP TRANSLATOR containing entire Nice class headings: how does the Office reflect the applicant's intention with respect to the class headings and/or the alphabetical list?

(iv) How will the scope of protection of CTMs containing general indications of the Nice class headings be interpreted? 

(v) OHIM interpretation of the scope of protection of national TMs containing general indications of the Nice class headings and 

(vi) “Trade marks filed after “IP Translator” containing the entire class heading: How can the applicant obtain protection for the full alphabetical list?” 

You can read this text in full here or download it here.