concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations
Organizations representing Community trade mark applicants and proprietors and representatives have requested a clarification of the practice of the Office regarding the use of class headings and the consequences of such use when Community trade mark applications or registrations are restricted or partially surrendered or are involved in opposition or cancellation proceedings. This communication is intended to explain and clarify the practice of the Office.
A Community trade mark application must contain a list of goods and services in respect of which registration is requested. This is a filing date requirement pursuant to Articles 27 and 26 (1) (d) of the Community Trade Mark Regulation (CTMR). Pursuant to Article 28 CTMR and Rule 2 of the Implementing Regulation (IR), goods and services in respect of which Community trade marks are applied for shall be classified in conformity with the common classification referred to in Article 1 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
The common classification, administered by the International Bureau of the World Intellectual Property Organization, consists of a list of classes, together with, as the case may be, explanatory notes, currently - since 1 January 2002 - comprising 34 classes for goods and 11 classes for services, each class composed of one or several general indications, commonly referred to as the "class heading" of a certain class, and of the alphabetical list of goods and services that currently contains some 12,000 entries together with the proper classification.
Pursuant to Rule 2 (2) IR, the list of goods and services must be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified preferably in only one class of the Nice Classification.
The Office strongly recommends that applicants properly classify their list of goods and services in the application and group them in the order of the Nice Classification. If this is not done, the Office will invite the applicant to remedy that deficiency pursuant to Rule 9 (3) (a) IR. This will necessarily lead to a delay in the treatment of the application.
It constitutes a proper specification of goods and services in a CTM application if the general indications or the whole class headings provided for in the Nice Classification are used. The use of these indications allows a proper classification and grouping. The Office does not object to the use of any of the general indications and class headings as being too vague or indefinite, contrary to the practice which is applied by some national offices in the European Union and in third countries in respect of some of the class headings and general indications.
It is further permitted to use a general indication mentioned in a class heading of a certain class and in addition more specific goods or services covered by the same general indication falling within the same class. For example, it is possible to indicate in class 16 "printed matter" and also "books, newspapers, magazines".
The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.
Similarly, the use of a particular general indication found in the class heading will embrace all of the individual goods or services falling under that general indication and properly classified in the same class. For example, the use of the general indication "Pharmaceutical and veterinary preparations" in class 5 will embrace all pharmaceutical preparations regardless of their composition or indication.
Furthermore, where it may not be obvious under which of several general indications particular goods or services fall, there is nevertheless a classification-based reasoning for the proper classification. For example, "computer software" is classified in cl. 9 because of the presence of the general indication "data processing equipment and computers" in that class, because computer software is seen as directly related to the corresponding apparatus or equipment. Therefore, when a specification contains "data processing equipment and computers" as a general indication, this will be considered as embracing also computer software. On the other hand, where a specification lists general indications in class 9 but not "data processing equipment and computers", computer software will not be considered as falling within the specification.
The effects of the rule that the use of the class headings constitutes a claim to all the goods or services falling within the relevant class, and that the use of a general indication constitutes a claim to all the particular goods or services falling under the general indication, become apparent when the Office has to deal with a request to restrict the list of goods and services pursuant to Article 44 (1) CTMR or with a partial surrender pursuant to Article 49 (1) CTMR. They become further apparent when the identity or similarity of goods or services is to be judged pursuant to Article 8 (1) CTMR in an opposition or cancellation proceedings.
1. As regards restrictions and partial surrenders, it constitutes a proper restriction (and not an inadmissible extension of the list of goods and services) when the list of goods and services of a Community trade mark application or registration that originally contained the complete class heading of a particular class is composed of one or more specific goods or services properly classified in the same class and the class headings.
Similarly, it constitutes a proper restriction (and not an inadmissible extension of the list of goods and services) if a specification is limited by deleting a general indication and instead selecting one or more specific items falling under the general indication. In the example cited above, it is proper to limit a specification to "computer software" when the original specification contained "data processing equipment and computers", but it would not be proper to do so when this general indication was not found in the original specification.
It remains of course also possible to declare a restriction or partial surrender by adding a limitation to a general indication (e.g., alcoholic beverages, namely gin, whisky, vodka; or alcoholic beverages with the exception of gin, whisky, vodka).
Once a restriction has been declared it is thereafter no longer possible to return to a broader specification. For example, where the original specification contained "data processing equipment and computers" and was thereafter limited to "computer software", it is then no longer possible to return to a broader indication, such as "computer hardware".
This rule is applied in the various proceedings in the Office when restriction or partial surrender may become relevant, i.e. at the ex-parte stage when classification or the examination of absolute grounds of refusal is at issue or in inter-partes proceedings when such a restriction or partial surrender may be declared by the proprietor of a Community trade mark application or registration in order to avoid an opposition or application for invalidation.
2. As regards opposition and cancellation proceedings, the rule that the use of the whole class heading of a particular class means that all the goods within that class are included has the consequence that when the later application or registration contains goods or services properly classified in that same class, the goods or services are identical with the goods or services in the earlier mark. When the specification does not include all of the general indications of a particular class heading, but only one or some of them, identity will be found only when the particular item falls under the general indication. For example, when the later mark is for "computer software", and the earlier mark is protected for "data processing equipment and computers", or when the earlier mark is protected for "pharmaceutical preparations" and the later mark is for a specific medicine, the goods will be identical.
As regards the requirement of use, a mark will be considered used for goods for which it is registered if the registration covers all of the general indications in a class heading and the goods for which the mark used are properly classified in the same class. Where the mark was registered only for some of the general indications in the class heading, use of the mark for registered goods will be found when the goods properly fall under the respective general indication found in the specification. This is without prejudice to the scope of protection of the mark for which use has been demonstrated, which is generally based on the goods for which the mark has been used rather than on the goods for which it is registered.
These rules will continue to be applied in the various proceedings referred to, and to the extent that exceptions from these rules have occurred, this will no longer be the case. There are no decisions of the Boards of Appeal which would be at variance with the rules explained.
Wubbo de Boer