On 19/06/2012 the Court of Justice of the European Union (CJEU) delivered its judgement of the Chartered Institute of Patent Attorneys V The Registrar of Trade Marks, C-307/10 (IP Translator).
This Judgment has an influence on the practice of all Trade Mark Offices of the European Union and in the interest of establishing certainty within the trademark system and for its users, calls for convergence on the interpretation of the general indications of the Nice class headings. Without prejudice to the fact that each Office is bound by its national legislation, national court decisions and, in some cases, previous communications, it is recognised by all that it is only through collaboration in implementing this Judgment in a harmonised manner will there be legal certainty both for the competent authorities and the economic operators.
The Trade Mark Offices of the European Union have been working together to establish a common understanding of the requirements necessary to achieve clarity and precision in the identification of goods and services in an application for registration and to develop a common set of criteria. The Trade Mark Offices of the European Union, therefore, created a set of guidelines that will help to identify when a classification term is sufficiently clear and precise (annexed Guidelines on the acceptability of classification terms). The Guidelines can also help to reason the acceptance or rejection of any classification term that is applied for. The Guidelines will be constantly updated and fine-tuned when needed.
Tools such as TMclass are available to assist in searching for and identifying acceptable terms. A classification term that is applied for will be added to the harmonised database on condition that it meets the criteria set in the Guidelines. Subsequently remaining terms comprised in the harmonised database will be made subject to revision in order to determine if they are in compliance with the Guidelines. The Guidelines can also be of assistance to reason the acceptance or rejection of these applied-for terms.
The common practice on acceptability of classification terms will be implemented on the date of publication of this communication.
The Trade Mark Offices of the European Union reiterate their commitment to continue to collaborate in the context of the Convergence Programme, further increasing transparency and predictability for the benefit of examiners and users alike.
The previous "Common Communication on the Implementation of 'IP Translator'" and the “Common Communication the General Practice on the General Indications of the Nice Class Headings” have been updated in respect of implementation dates of some offices.
Common Communication on the Common Practice on the Acceptability of Classification Terms (0.56 MB, File)
Updated:
Common Communication on the Implementation of IP Translator (0.46 MB, Adobe PDF)
Common Communication on the general practice on the General Indications of the Nice Class Headings (0.42 MB, File)