TRADEMARKS IN THE EU
“THE TRADEMARK OFFICES OF THE EU HAVE ALREADY REVIEWED ALL GENERAL INDICATIONS OF THE NICE CLASS HEADINGS AND DETERMINED THAT 11 OF THEM ARE NOT SUFFICIENTLY CLEAR AND PRECISE.”
about the application, the risk of infringement or oppositions, and use of the new trademarks.
For example, the scope of protection of
trademarks filed in Spain before, as well as aſter, IP Translator containing entire Nice Classification class headings will be interpreted literally by the Spanish Patent and Trademark Office (OEPM) and will not cover the entire class plus the alphabetical list of the relevant edition of Nice at the time of filing unless each of the terms in the alphabetical list is specified and listed individually.
By contrast, the scope of protection of trademarks filed with the Office for Harmonization in the Internal Market (OHIM) before IP Translator containing entire Nice class headings will be interpreted by the office to cover the literal meaning of the class headings plus the alphabetical list of
the edition of Nice at the
time of filing. Trademarks filed with OHIM aſter IP Translator containing entire Nice class headings will be interpreted literally, and will not cover the entire class plus the alphabetical list of the edition of Nice at the time of filing unless each of the terms of the alphabetical list is specified and listed individually.
Also, the scope of protection of Community trademarks containing general indications of the Nice class headings will be interpreted by the OEPM literally, whether the trademark was applied for before or aſter IP Translator. OHIM will interpret the scope of protection of Community trademarks containing general indications of the Nice class headings as covering the literal sense of the class heading terms plus the alphabetical list valid at the time of filing when filed before IP Translator, but the terms of the class headings will be interpreted literally for Community trademarks filed aſter IP Translator.
Tese differences have implications for oppositions filed at each office, and whether such oppositions are based on Spanish or Community trademarks, as rulings will depend on whether the date of filing was before or aſter IP Translator.
preclude identifying the goods and services for which the protection of the trademark is sought, an applicant for a national or a Community trademark that uses all the general indications of a particular class heading needs to know whether its application for registration will be interpreted as intended to cover all the goods or services included in the alphabetical list of that class, or not. Also, to be able to determine whether a trademark of a third party will be interpreted to cover such goods is of particular relevance when making decisions
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OHIM will asses the scope of protection of
national trademarks containing general
indications of the Nice class headings, interpreting terms literally aſter IP Translator, unless the national office interprets the class headings to cover all goods and services in the class; in this particular case, the national trademark containing Nice class headings will be interpreted as covering the class heading on a literal basis, plus the alphabetical list of the Nice edition in force at the time of filing.
Álvaro Pérez Lluna is a graduate in law and a partner at DeMarks & Law. He has extensive expertise in advising a large number of companies and individuals in the field of IP rights and is registered as a lawyer with the Ilustre Colegio de Abogados de Valencia. He is also a member of the IP section of the Valencia Bar Association.
World Intellectual Property Review Annual 2014 33
Te trademark offices of the EU have already reviewed all general indications of the Nice class headings and determined that 11 of them are not sufficiently clear and precise, and consequently will not be accepted without further specification as of February 20, 2014, in the case of the OEPM or December 2, 2013, in the case of OHIM.
To conclude, the agreed interpretation is that a term does not provide a clear indication of what goods or services are covered when it simply states what the goods are made of, and not what the goods are, or what the services are, but not what is to be serviced.
Álvaro Pérez Lluna is a partner at DeMarks & Law. He can be contacted at:
alvaroperez@demarks.es
Finally, as a practical approach to filing
trademarks that contain the entire class heading in Spain aſter IP Translator, it should be noted that for the applicant to obtain protection for the full alphabetical list, it is necessary for each of the terms to be listed individually. Te same approach is also applicable to Community trademarks.
For the purpose of certainty and for public information, both the OEPM and OHIM will reflect
the applicant’s intention with respect
to the class headings and/or the alphabetical list for trademarks filed aſter IP Translator containing entire Nice class headings, by listing individually all goods and services applied for or registered, and not by simply making available a general reference to the applicable edition of the alphabetical list.
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