Community Trade Mark Office Releases Guidance on Acceptable Goods/Services

The Community Trade Mark Office, OHIM, has issued a new practice manual, effective from 1 February 2012, on acceptable terms in a trade mark specification of goods and services.

The manual can be viewed here and follows on from the adoption of the 10th Edition of the Nice Classification on 1 January 2012 which can also be viewed here.

Whilst the majority of the OHIM manual sets out alphabetical guidance on the use of particular terms, an interesting aspect of this document is on Page 5, regarding the use of the ‘class headings’ from the Nice Classification. The current practice of OHIM is that a trade mark which contains goods/services using a class heading is deemed to cover all goods or services in that particular class. For example, filing the class heading ‘musical instruments’ in Class 15 would also be deemed to cover ‘stands for musical instruments.’

However, as can be seen from the footnote on Page 5 of the manual, OHIM is aware of the IP TRANSLATOR case, pending a ruling from the Court of Justice of the EU. This ruling, when it is issued later this year, is likely to affect the practice concerning exactly what a class heading is deemed to cover.

It is interesting to note that OHIM is working closely with a number of national IP Offices of EU member states to work towards a common approach to the interpretation of the class headings.

Our recent publication on the Advocate General’s opinion in the IP TRANSLATOR case, which can be seen here, refers to the fact that some national IP Offices consider that a class heading covers all goods/services in that class, whilst other Offices take the approach that the list of goods/services as filed covers only what is actually listed.

Avidity IP will be monitoring any developments regarding this issue, and any resulting changes in the practice of OHIM and the national IP Offices of the EU member states.