Specification of Goods and Services
The Office for Harmonization in the Internal Market (OHIM), also known as the European Community Trademark Office, has recently changed its practice regarding the use of class headings in the lists of goods and services for CTM applications and registrations following a decision by the European Court of Justice on June 19, 2012.
Previously, using the class headings of the Nice Classification was acceptable as a proper specification of goods and services, and the use of a class heading was considered to constitute a claim to all of the goods or services falling under that class.
However, on June 20, 2012, the OHIM reversed its prior position and issued new standards, effective June 21, 2012.
Class Headings May Still Be Acceptable
OHIM will continue to accept the use of class headings on a case-by-case basis, provided that such identification is “sufficiently clear and precise.” It is uncertain how OHIM and the national authorities will assess whether a claim meets the requisite standard, but OHIM stated that it will work towards a common practice with the EU National Offices.
Class Headings No Longer Automatically Cover All Goods/Services in the Class
Use of an entire class heading no longer automatically provides protection for all of the goods/services in the relevant class. Instead, applicants who seek protection for all of the goods/services in the class must file a declaration as a part of the application that specifies their intent. If the declaration is not filed, OHIM will assume that the applicant is applying for the class heading in the literal meaning of each of the general indications contained therein and not for all of the goods and services in the class.
Previous Registrations and Applications Are Not Affected
For CTMs that use all the general indications of a particular class heading and were/are:
• Registered before June 21, 2012: OHIM assumes that the applicant’s intent was to cover all the goods/services included in the alphabetical list of that class.
• Filed before June 21, 2012 but not yet registered: OHIM assumes that the applicant’s intent was to cover all the goods/services included in the alphabetical list of that class, unless the applicant specifies otherwise.
• Filed after June 21, 2012: the applicant must expressly indicate whether its intention is to cover all goods or services in the class. If the application concerns only some of the goods or services in the class, the applicant is required to specify which goods/services it intends to cover.
Updated Recordal Application
OHIM updated its recordal application as of June 2012. The application now allows for “Division” as a possible type of recordal. A request for division must clearly define the goods and services to be divided and ensure that there is no overlap between the goods and services that remain in the original application or registration and those that are divided between the new application(s) or registrations(s).