Journal of Intellectual Property Law & Practice Advance Access originally published online on January 12, 2007
Journal of Intellectual Property Law & Practice 2007 2(2):76-88; doi:10.1093/jiplp/jpl209
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© The Author (2007). Published by Oxford University Press. All rights reserved
International Classification class headings: illustrative or exemplary? The scope of European Union registrations
LEGAL CONTEXT: The UK Trade Marks Registry and Office for Harmonization in the Internal Market (OHIM) have issued conflicting official guidance notes on the meaning of International Classification class headings in trade mark applications and registrations: OHIM that a class heading is equivalent to ‘All goods/services in class XX’, and the UK Registry that a class heading is merely an exemplary list of the sort of goods which fall in that class.
KEY POINTS: OHIM's view introduces an extra-regulatory concept of goods/services ‘directly related’ to those as registered and gives them rights as if identical thereto.
PRACTICAL SIGNIFICANCE: These conflicting views lead to the prospect of otherwise identical UK (and other EU national registrations) and Community Trade Mark registrations having differing scopes of protection, contrary to the intention of the EU Harmonisation Directive to remove disparities in legal provisions that may impede the free movement of goods or distort competition. The OHIM view gives a registration protection for items not described in its list of goods/services, invisible unless you know the secret code and with nothing to warn the businessman or other non-specialist reader that that is the case.
Key Words: The registrability of a trade mark, as well as its scope of protection, does not only depend on its distinctiveness—it can also depend on so apparently arbitrary a matter as the classification, within the Nice Agreement, of an applicant's mark and earlier similar marks. • Although, in general terms, the desirability of classification and the basic framework for classifying marks are beyond dispute, the significance of terms used in classification is open to dispute. In particular, OHIM practice is at odds with that of some national granting offices within the European Union. • This article reviews the merits and demerits of regarding the designation of goods or services as being exemplary or merely illustrative, noting in particular how the approach taken may be crucial when determining that a trade mark is vulnerable to an application for revocation for non-use.
* Kilburn & Strode, London. The author may be contacted at rashmead{at}kstrode.co.uk