26 July 2010

Clarification of Class Headings of the International Classification of Goods and Services - IP Translator

Angela Thornton-Jackson

At present, OHIM (and other member states of the EU) consider that Nice class headings include all goods and services in that class. However, the UKIPO believe that the interpretation of the goods and services claimed may only be made by reference to those goods/services actually covered by the statement.

Eg, at OHIM, an application for the class 41 heading: ‘Education; providing of training; entertainment; sporting and cultural activities’ would be deemed to cover all services falling within class 41, even if not expressly stated – such as ‘translation services’ – which do fall within class 41. Traditionally, at the UKIPO, a claim for the class 41 heading would not include translation services.

Following an application by CIPA (Chartered Institute of Patent Attorneys) for IP TRANSLATOR for ‘Education; providing of training; entertainment; sporting and cultural activities’ in class 41, the following three questions have been referred to the ECJ for clarification of the correct approach:

1. Is it necessary for the various goods or services covered by a trade mark application to be identified with any and, if so, what particular degree of clarity and precision?
2. Is it permissible to use the general words of the class headings of the International Classification of Goods and Services established under the Nice Agreement…for the purposes of identifying the various goods or services covered by a trade mark application?
3. Is it necessary or permissible for such use of the general words of the class headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4103 of the President of the Office for Harmonisation in the Internal Market [OHIM] of 16 June 2003?

[The latter communication set down OHIM’s policy above that claims to Nice class headings do include all goods and services in that class.]

The clarification is clearly desirable since, at present, the scope of protection afforded under the same wording at the UKIPO and at OHIM can be markedly different.