In a number of key areas, trade mark law has not been applied in the same manner across the European Union ("EU"), even though the legislation in the member states stems from the same EU law. One such area relates to the use of class headings from the Nice Classification which is the list of goods and services a trade mark registration may cover. This led to the Court of Justice of the European Union's recent decision in the IP TRANSLATOR case.

For a number of years, national trade mark offices across the EU have taken different approaches to the use of class headings. The British Trade Mark Registry took a literal approach, namely that claiming the class heading would cover only the specific goods included in that heading. For example, including the class heading for class 41, namely "Education; providing of training; entertainment; sporting and cultural activities", covers those listed services only, and does not necessarily extend protection to "photography services", which are also in class 41, but are clearly not encapsulated by any of the terms in the class heading.

On the other hand, OHIM (the European Community Trade Mark Registry) took the position that the class heading implicitly covered all goods or services in the relevant class and, as such, including the class heading in class 41 would cover photography services. The Community Trade Mark courts, which are part of the national court systems of the European Union member countries, also differed in their interpretation of the scope of a class-heading claim.

Case C-307/10 IP Translator was brought by the UK Chartered Institute of Patent Attorneys and appealed up to the Court of Justice of the European Union in an attempt to clarify the law on class headings. The CJEU issued its decision on 19th June 2012. It found the use of class headings to be acceptable, provided the identification of goods or services is sufficiently clear and precise to allow the competent authorities and users of the system to determine the scope of the protection sought. They went on to find that:

"an applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered"

Following the CJEU's decision, OHIM has amended its practice. It requires that if an applicant intends to cover all of the goods or services featured in the alphabetical list of the Nice Classification by using the class heading, that applicant must file a corresponding declaration alongside its application.

To ensure the widest possible coverage, unless circumstances otherwise dictate, applicants have in the past been advised to list the class heading, along with a list of the specific goods and services of relevance to their business. In view of the ongoing uncertainty this advice is unlikely to change. However, it would also be sensible for applicants, when making a class heading claim at OHIM, also to file the required "IP Translator Declaration".

OHIM has indicated that it will deem all Community Trade Marks filed before 20th June 2012 which claimed the full class heading as covering all the goods or services in the alphabetical list of that class in the Nice edition in force at the time of filing.

It has also been announced that as part of an ongoing "Convergence Programme", OHIM and the National Offices of EU member states are working towards a unified practice as regards class headings. It is difficult to predict at this stage how the ongoing differences in national approaches to class headings will be resolved by this process.

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