The UK Registry issued a Practice Amendment Notice ("PAN") immediately following the IP TRANSLATOR decision. Taking into account the decision of the Appointed Person following the CJEU judgement, the
The UK Registry issued a Practice Amendment Notice ("PAN") immediately following the IP TRANSLATOR decision. Taking into account the decision of the Appointed Person following the CJEU judgement, the PAN confirms the practice adopted by the UK IPO in regard to the use of class headings in trade mark specifications which reinforces the "it-means-what-it-says" approach and confirms that general class headings can be used in a specification if they are sufficiently clear and precise.
An updated PAN has recently been issued which clarifies the issue of which class headings meet the test of being sufficiently clear and precise. The PAN sets out a list of 11 general indications in class headings of the Nice Classification which all EU national offices have agreed are too vague to meet the CJEU's requirements for clarity and precision, namely Classes 6, 7, 14, 16, 17, 18, 20, 37, 40 and 45. The PAN sets out examples of particular terms used for goods and services which will not be accepted, for example "treatment of materials" in Class 40.
Under the PAN, which is effective for new applications filed after 5 August 2013, the UK IPO has advised that use of the general indications in these class headings either alone or in combination with other such indications will result in an objection being raised under Rule 8(2)(b) of the Trade Marks Rules 2008.
However, some parts of the general indication may meet the requirement of clarity and precision. For example "machine tools" in Class 7 will not attract an objection if used in a specification whereas the full general indication "machines and machines tools" will attract an objection because "machines" is too vague.
In respect of seeking protection for all goods in the alphabetical list under a particular class, these goods or services will need to be expressly named in the application. Use of a catch all phrase such as "all goods in Class X" will not be permitted on the basis it does not meet the requirement of clarity and precision.
On a practical level, the trade mark application form requires the applicant to confirm that terms used in their list of goods and services are to be given their ordinary and natural meaning. If the applicant wishes to register a mark for all the goods or services set out in the alphabetical list for a particular class or classes of the NICE classification system, they will list all the individual terms in the alphabetical list for the class(es) concerned in the application.
This approach doesn't shift from the UK-IPO's previous approach to the use of class headings which has always been that the class heading is interpreted to mean what it says and in this respect the wording needs to be sufficiently clear to avoid an objection under Rule 8(2)(b). This is surely the preferred approach when trying to make sense of the IP TRANSLATOR case. An applicant should be able to clearly and precisely define the goods and services for which they want protection. If they want all the goods falling within a Class list, they should be listed.
While an applicant can still make a claim to a broad range of goods and services by listing items in the alphabetical list in the class, best practice will always be to accurately define the goods and services for which the mark is actually intended to be used now and in the foreseeable future rather than unjustified claims to a broad range of goods and/or services.
An updated PAN has recently been issued which clarifies the issue of which class headings meet the test of being sufficiently clear and precise. The PAN sets out a list of 11 general indications in class headings of the Nice Classification which all EU national offices have agreed are too vague to meet the CJEU's requirements for clarity and precision, namely Classes 6, 7, 14, 16, 17, 18, 20, 37, 40 and 45. The PAN sets out examples of particular terms used for goods and services which will not be accepted, for example "treatment of materials" in Class 40.
Under the PAN, which is effective for new applications filed after 5 August 2013, the UK IPO has advised that use of the general indications in these class headings either alone or in combination with other such indications will result in an objection being raised under Rule 8(2)(b) of the Trade Marks Rules 2008.
However, some parts of the general indication may meet the requirement of clarity and precision. For example "machine tools" in Class 7 will not attract an objection if used in a specification whereas the full general indication "machines and machines tools" will attract an objection because "machines" is too vague.
In respect of seeking protection for all goods in the alphabetical list under a particular class, these goods or services will need to be expressly named in the application. Use of a catch all phrase such as "all goods in Class X" will not be permitted on the basis it does not meet the requirement of clarity and precision.
On a practical level, the trade mark application form requires the applicant to confirm that terms used in their list of goods and services are to be given their ordinary and natural meaning. If the applicant wishes to register a mark for all the goods or services set out in the alphabetical list for a particular class or classes of the NICE classification system, they will list all the individual terms in the alphabetical list for the class(es) concerned in the application.
This approach doesn't shift from the UK-IPO's previous approach to the use of class headings which has always been that the class heading is interpreted to mean what it says and in this respect the wording needs to be sufficiently clear to avoid an objection under Rule 8(2)(b). This is surely the preferred approach when trying to make sense of the IP TRANSLATOR case. An applicant should be able to clearly and precisely define the goods and services for which they want protection. If they want all the goods falling within a Class list, they should be listed.
While an applicant can still make a claim to a broad range of goods and services by listing items in the alphabetical list in the class, best practice will always be to accurately define the goods and services for which the mark is actually intended to be used now and in the foreseeable future rather than unjustified claims to a broad range of goods and/or services.