Using the Nice Classification Heading when applying for a trademark at the Office for the Harmonization of the Internal Market has been, over the years, a highly debated matter.
According to the former procedure, when filing a new trademark application, the use of the whole class heading class covered the whole alphabetical list of goods/services of that class. This practice led to numerous uncertainties and different ways of approach and eventually the Office had to establish clear rules for the identification of goods ad services in the trademark systems.
The first discussions regarding the necessity of a change have taken place after the European Court of Justice judgement in „the IP Translator“ case of 19 June 2012.
Later, in 2014, OHIM issued three official communications establishing new rules to help identify the goods and services for which protection is sought with a trademark registration.
The Common Communication on the Implementation of IP Translator v1.2 provides information regarding the domestic trade mark offices‘ approach in relation to the use of the Nice class headings while also stating the meaning that the class heading will have at OHIM.
The Common Communication on the Common Practice on the General Indications of the Nice Heading v1.1 states 11 general indications of the Nice class headings which, the trade mark offices considered to be non-acceptable for the identification of goods/services.
The Communication on the Common Practice on the Acceptability of Classification Terms v1.0 provides guidelines that will help determine if a classification term describes with clarity and precision the goods/services they refer to.
One of the most important changes adopted with the new communications results in the current practice (after „IP Translator“) that is used at the Office, when using a class heading for the registration of a trademark.
According to OHIM, in these cases the class headings are “to be interpreted literally” and if the applicant seeks protection for the full alphabetical list, each term will have to be listed individually.
Regarding the scope of protection of Community Trademarks containing general indications of the Nice class headings, again, the terms of the class headings are to be interpreted literally. Anyway, for the CTMs filed before the „IP Translator“ judgement, the class headings cover both the literal sense of the class headings terms and the alphabetical list of goods valid at the time of filing.
The aforementioned provisions are mentioned in the amending Regulation (EU) No 2015/2424 as well. Accordingly, article 28 (5) states: “The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.”
– Common Communication on the Implementation of IP Translator v1.2
– Common Communication on the Common Practice on the General Indications of the Nice Class Heading v1.1
– Common Communication on the Common Practice on the Acceptability of Classification Terms v1.0