Classification practice at the DPMA modified since 2014
In the course of implementing the Harmonised Database (HDB), it became clear that classification practices of the national trade mark offices in Europe, to a certain extent, differed considerably from each other and from the practice of the European Union Intellectual Property Office (EUIPO): The offices accepted and interpreted various terms of goods and services differently. The establishment of the HDB database has succeeded in achieving a largely consistent approach to the classification of goods and services, which goes beyond the principles of the Nice Classification, and a harmonisation of the interpretation and acceptance of some 73,000 goods and service terms.
The common practice on the acceptability of classifcation terms is described in a Common Communication of 20 February 2014. In the course of this harmonisation, the German Patent and Trade Mark Office (DPMA) has modified its classification practice in respect of trade mark applications.
Interpretation of the Nice class headings
Within the framework of the Europe-wide harmonisation of the classification, convergence on the interpretation of the Nice class headings was also 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 to enable the competent authorities as well as the economic operators to determine the extent of trade mark protection on the basis of these general indications alone. The outcome was that five terms of the class headings were deemed to be too vague. Please refer to the Gemeinsamen Mitteilung zur gemeinsamen Praxis bei den in den Klassenüberschriften der Nizza-Klassifikation enthaltenen Oberbegriffen (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 class headings of the Nice Classification obtains protection only for descriptions that cover the literal meaning of the class headings. Some national trade mark offices in Europe had a different practice with regard to this issue. The Gemeinsamen Mitteilung zur Anwendung von "IP Translator" ( Common Communication on the Implementation of "IP Translator") of 24 September 2016 contains a complete overview of the practices of all IP offices in Europe before and after the "IP Translator" judgment.
Uniform rules become manifest in Trade Mark Law Modernisation Act
The change in the classification practice at the DPMA, in particular through its Europe-wide harmonisation and the case law of the CJEU, has now become manifest in the EU Trademarks Directive (in particular Article 39) and the concomitant Trade Mark Law Modernisation Act (Markenrechtsmodernisierungsgesetz, coming into force on 14 January 2019). The rules governing the classification of goods and services are reflected in a special way in the revised legal provisions of Section 20 (2), (3) and (5).
Last updated: 18/10/19