Most of you will be aware of the goods and services classification system under the Nice Classification which is applied for the registration of trade marks. There are currently 45 classes of goods and services (34 goods classes and 11 services classes) in the Nice Classification. Each class provides a “class heading” which is a representative list of the goods/services in the class. The class headings are not exhaustive and therefore an alphabetical listing of the goods and services are provided for each class.
Prior to June 2012, Community Trade Mark (CTM) Applicants seeking broad protection for its marks in the EU took advantage of the Office of Harmonization in the Internal Market’s (OHIM) class heading “cover-all” approach meaning that if a class heading was claimed, the OHIM interpreted coverage of the mark to include all goods/services in the class. However since the decision by the Court of Justice of the EU in the IP Translator case in June 2012, the practice has now changed. The current practice is that CTM applicants must describe the goods/services with “sufficient clarity and precision to enable the competent authorities and economic operators on that basis alone to determine the extent of protection”.
While it is still possible to claim the class headings, an applicant must specify whether the application is intended to cover all the goods/services included in the Nice Classification alphabetical listing for the class or only some of those goods/services. If the application covers only some of those goods/services the applicant is required to specify the goods/services in that class that are intended to be covered.
Coverage of CTMs registered prior to 22 June 2012
As a result of the IP translator case, the OHIM has issued a draft Community Trade Mark Registration (Regulation) which will have a significant impact on trade marks which have been registered for the class heading. The goods/services covered by those marks will be interpreted according to their literal meaning and the registration will no longer cover all goods/services in the alphabetical listing for that class.
To ensure that CTMs registered prior to 22 June 2012 contain the goods/services which its owner intended to obtain protection for at the time of filing, those owners will have 6 months after the new Regulation is entered into force to file a “declaration” indicating their intention to seek protection for goods/services beyond their literal meaning of the class heading. Note however that the goods/services being claimed must have been included in the version of the Nice Classification alphabetical list in force at the time the CTM was filed. If the declaration is not filed within the 6 month period, the CTM which covered the class heading will extend only to the literal meaning of the goods/services in the class heading in the original application.
What to do now
CTM owners should review their existing portfolios to ascertain whether any CTM was filed prior to 22 June 2012. Where such marks exist, owners should consider whether class headings were claimed in the initial application and if so, whether the class heading provides protection for goods/services as intended at the time of filing. If not, amendments should be made to the goods/services in accordance with the version of the Nice Classification which was in force at the time of filing the CTM. Of course, this may result in those CTMs not providing sufficient protection for core brands and goods/services. In such cases, owners should consider filing new CTMs to avoid a loss of rights to the trade mark.