EUIPO (OHUM) Manual: Major Change to Classification

The changes are in light of the well known and publicised IP TRANSLATOR (C-307/10) case, which sought to clarify the interpretation of protection when using class headings. Since this time, consultations have taken place between OHIM and the European Union (EU) National Offices to review each of the 197 general indications used within the Nice classification class headings, in order to assess their acceptability for classification. The result of the consultations is a confirmed list of eleven general indications which, as they stand, do not follow the requirements for “clarity and precision” as laid down in the IP TRANSLATOR decision. Therefore, if these eleven general indications are used, they must be further defined to indicate the intended goods/services in order to be accepted. The remaining 186 general indications were found to be acceptable for classification, so are terms which can be used alone without need for further definition.

In line with the above changes OHIM will also change their practice on the use of “all goods/ services in this class/alphabetical class list” or such similar indications in specifications. Since IP TRANSLATOR use of this indication has increased, but from 25 November 2013 use of any such wording will no longer be accepted. This could result in only the specific goods or services listed along with that phrase being covered, or the application itself being rejected a filing date if no other classes/goods or services are listed.

These changes are a welcome move toward ironing out the various classification issues and confusion IP owners and practitioners have experienced over the last year. We doubt, however, that we have heard the last of IP TRANSLATOR and the ensuing classification issues which it gave rise to.