November 20, 2013
European Union: restrictions to the use of class headings definitions in European Community (CTM) trademarks 
The Nice international classification of goods and services (10th Edition), which applies to European Community (CTM) trademarks, includes class headings definitions providing a general description of the fields of goods or services in the 45 existing classes as well as an alphabetical list of all the goods or services covered by these classes.

Contrary to certain jurisdictions, such as the U.S.A. or Israel, the European Union Office (OHIM) is usually accepting general wording of lists of goods/services in trademark applications, including class headings definitions, without any requirements regarding the actual use of the mark.

The OHIM issued on November 20, 2013 a “Common Communication”, providing a list of the class headings definitions, which are not considered sufficiently clear and precise and thus shall not be accepted anymore.

The OHIM Manual Concerning Examination of Classification of Goods and Services was amended accordingly. The amendments entered in force with the launch of the new OHIM website on December 2, 2013. The new website includes a modified e-filing system enabling the applicant to select pre-approved definitions of goods and services, which shall be accepted automatically by the European Office.

The amendment of the Manual followed the IP TRANSLATOR judgment rendered in June 2012 by the European Court of Justice. In this decision, it was ruled that the use of the class headings definitions was not covering all goods and services included in the alphabetical list of a specific class. The issue was related to application for registration of the mark IP TRANSLATOR filed in the United Kingdom, in respect of the class 41 headings definitions, namely, Education; providing of training; entertainment; sporting and cultural activities”. The UK Registrar claimed that the mark was devoid of distinctive character, since the use of the class headings was actually covering all services included in class 41, including translation services. The case was brought before the CJEU, which ruled that class headings were acceptable as soon as they were sufficiently “clear and precise” and that such definitions were not covering all goods/services included in the alphabetical list of such class.

The IP TRANSLATOR decision created some confusion as to the interpretation of the OHIM practice regarding class headings definitions and thus discussions were initiated in order to reach an agreement about the class headings, which are not complying with the requirements of clarity and precision as set out in the IP TRANSLATOR judgment.

The amended Manual provides a detail of the 11 general indications which are not considered anymore sufficiently clear and precise and thus will not be accepted, as follows (marked in bold):
 
  • Class 6:      Goods of common metal not included in other classes
  • Class 7:      Machines
  • Class 14:    Goods in precious metals or coated therewith, not included in other classes
  • Class 16:    Paper, cardboard and goods made from these materials, not included in other classes
  • Class 17:    Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other
                       classes
  • Class 18:    Leather and imitations of leather, and goods made of these materials  and not included in other classes
  • Class 20:    Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone,
                       shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
  • Class 37:    Repair
  • Class 37:    Installation services
  • Class 40:    Treatment of materials
  • Class 45:    Personal and social services rendered by others to meet the needs of individuals 

Concerning the terms “goods of..” or “goods made of…”, it should be indicated what the goods are, and not only what they are made of. Retails services in class 35 concerning one of the above indicated goods, will not be accepted either. Concerning “repair” and “installation” services, it should be indicated what goods are to be repaired or installed. As to “Treatment of materials”, the nature of the treatment and of the materials to be treated should be specified.
 
The other 186 class headings definitions of the Nice agreement remain acceptable.
 
Moreover, the amended Manual provides that descriptions such as “all goods/services in this class” or “all goods/services of the alphabetical list in this class” are not acceptable.
 
As a consequence, a careful attention should be given to the drafting of list of goods and services in a CTM application, while keeping in mind that a CTM registration including a wider list than the actual use of the mark may be unnecessarily exposed to oppositions or cancellation actions.