OHIM
CIPA appealed, and the case found its way to the Court Of Justice for Te European Union (CJEU), aſter a referral from appointed person Geoffrey Hobbs QC. He referred three questions, aiming to clarify the question of what a trademark in a given class can be assumed to cover. In the past, the Office for Harmonization in the Internal Market (OHIM) had effectively construed class headings as a catch-all for everything in the relevant class when dealing with Community Trademark (CTM) applications.
Te CJEU’s ruling on June 19 on IP Translator seems to have brought some clarity to the issue, but while the court did say that trademark applications should be specific about what they cover with “sufficient clarity”, it stopped short of a hard and fast rule for understanding how class headings can be used. Indeed, in requiring applicants to specify whether their applications are for trademarks covered by the alphabetical list of headings in the class or for a specified part of those goods, it arguably muddied the waters somewhat.
In any event, it was clear that OHIM’s previous approach would have to change. Te day aſter the CJEU’s
judgment, OHIM released Communication 2/12, in which it said: “An
applicant for a trademark 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 “WE MUST
RECOGNISE THAT THERE IS STILL A DIVERGENCE IN PRACTICE ON CLASS HEADINGS BETWEEN OFFICES IN THE EU AND WHAT WE NEED IS A COMMON APPROACH.”
the
trademark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned 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.”
António Campinos, president of OHIM, says that while the communication was issued aſter the judgment in order to implement the court’s decision immediately, it has long been acknowledged that work needs to be done on class headings. “We must recognise that there is still a divergence in practice on class headings between offices in the EU and what we need is a common approach that everyone can accept,” he says, and while this situation hasn’t changed as a result of IP Translator, “it has certainly given some added urgency to the efforts already being made to create a new common practice”.
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18
World Intellectual Property Review September/October 2012
www.worldipreview.com
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