Notice of 29 September 2016
on the Common Communication on the Common Practice on the General Indications of the Nice Class Headings and on the Common Communication on the Implementation of 'IP Translator'
Within the framework of the Europe-wide harmonisation of the classification, convergence on the interpretation of the Nice class headings was achieved. Following the CJEU's judgment 'IP Translator' (C-307/10 of 19 June 2012), the class headings were examined with regard to whether the general indications are sufficiently clear and precise for the competent authorities as well as the economic operators to be able to determine the scope of trade mark protection exclusively on the basis of the general indications. The outcome was that five terms of the class headings were deemed to be too vague. Please refer to the Common Communication on the Common Practice on the General Indications of the Nice Class Headings of 28 October 2015 for the reasons why the terms are non-acceptable.
Anyone using Nice class headings obtains protection only for descriptions that cover the literal meaning of the class headings. Some European trade mark offices had a different practice with regard to this issue. The Common Communication on the Implementation of 'IP Translator' of 24 September 2016 contains a complete overview of the practices of all European IP offices before and after the 'IP Translator' judgment.
Please also refer to the DPMA notice on the 'IP Translator' judgment of 12 November 2012 (available in German only).
Notice of 12 November 2012
Non-acceptable general indications of the Nice class headings
Interpretation of the implementation of the CJEU's judgment 'IP Translator'
The CJEU has determined that general indications of Nice class headings can be used in lists of goods and services if the indication is sufficiently clear and precise. The CJEU did not comment as to which of those general indications are sufficiently clear and precise within this meaning.
Classification experts of the EUIPO and of numerous European trade mark offices have discussed this question and examined all of the Nice class headings. They have come to the conclusion that five general indications of the class headings are not sufficiently clear and precise; all other general indications can be used for lists of goods and services.
The following terms of the Nice class headings may not be used on their own in the list of goods and services of a trade mark:
- Class 7 - machines
- Class 37 - repair
- Class 37 - installation services
- Class 40 - treatment of materials
- Class 45 - personal and social services rendered by others to meet the needs of individuals
Last updated: 23/02/18