Information notice of the Hungarian Intellectual Property Office on the application of class headings of the Nice Classification in the light of the judgment of the Court of Justice of the European Union in Case C-307/10

1. Introduction

Pursuant to Article 50 (2) of Act XI of 1997 on the Protection of Trade Marks and Geographical Indications (hereinafter 'TM Act'), trademark applications must contain a list of goods and services in respect of which registration is sought. Pursuant to Article 51 (1) (c) of the TM Act, the list of goods shall also be a precondition of the recognition of the date of filing. Pursuant to Article 52 (3) of the TM Act in the list of goods or services, the goods or services shall be specified according to the classes of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter 'Nice Classification') and, if possible, using the terms included therein.

2. Judgment in the IP Translator case

In its judgment of 19 June 2012 in Case C-307/10 [The Chartered Institute of Patent Attorneys v Registrar of Trade Marks ('IP TRANSLATOR')], the Court of Justice of the European Union (CJEU) ruled that standards of clarity and precision are to be applied when goods and services for which protection is sought are specified in the trade mark application. The Court also laid down principles applicable to the use of the general indications appearing in the class headings of the Nice Classification.

The guidelines set forth in the Court of Justice's judgment can be summarized as follows:

1. The goods and services for which the trademark protection is sought must be identified by the applicant with sufficient clarity and precision.
2. If the applicant uses all the general indications of a particular class heading of the Nice Classification, he shall declare whether his application is intended to cover all the goods or services included in the alphabetical list of the given class or only some of the goods or services belonging to that class. In the absence of such a declaration the specification of goods or services cannot be regarded as sufficiently clear and precise.
3. Concerning the use of general indications in class headings of the Nice Classification- provided it is not realised by indicating the entire class heading - industrial property offices of the Member States shall judge on a case-by-case basis whether these identifications are sufficiently clear and precise.

3. The use of the Nice Classification's class headings and their general indications in trademark applications

Regarding particular trade mark procedures, the Court of Justice's IP Translator judgment gave binding guidelines for the interpretation of Directive 2008/95/EC (the codified version of the Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks, hereinafter Trade mark Directive) in two aspects. One of the questions raised was whether general indications of the class headings of the Nice Classification may be used in the trade mark applications' list of goods (such as 'shoes' in class 25.) The Court gave the following answer to that question: general indications of the class headings can still be used in the list of goods, provided that this identification is sufficiently clear and precise. The Hungarian Intellectual Property Office (HIPO) shall therefore consider on a case-by case basis whether the given general indication meets the requirement of clarity. This will not lead to any significant change in the national practice, since the HIPO has already been examining this aspect; but henceforth the HIPO will apply the criteria provided in the IP Translator case. For the sake of the practice's transparency the HIPO publishes a list of those general indications which are deemed not to meet the requirement of clarity. However, that list of insufficiently clear indications is not exhaustive and it may be extended in the future as part of efforts to achieve a uniform European application of law, and the HIPO reserves the right to call on the applicant for precision in relation to other general terms as well.

The judgment also provides an answer to the question whether entire class headings of the Nice Classification (all the general indications listed therein, for example in class 25 'Clothing, footwear, headgear') can be used to identify the list of goods. The Court of Justice did not exclude this possibility. However, it did set the following requirement: the applicant shall supplement the list of goods with a declaration in which - if that is the applicant's intention - he must declare whether his application for registration is intended to cover all the goods or services included in the alphabetical list of that class. In that respect, the judgment introduces two changes from the HIPO's former practice. If the applicant indicated the entire class heading, it shall be supplemented by a declaration. In this case, the trade mark's protection is only extended to cover the goods or services included in the alphabetical list of the particular class, according to the edition of the Nice Classification in force on the filing date (contrary to the HIPO's former practice, in which protection was extended to cover all goods belonging to a particular class and services, regardless of whether they were included in the alphabetical list).

Therefore, when filing his application, the applicant is provided with three possibilities to specify which goods and services he is seeking protection for:

1. If the applicant requests protection for all goods and services included in the alphabetical list of a given class, he shall use all general indications included in the class heading and shall declare that he seeks trademark protection that covers all goods and services included in the alphabetical list.
2. If the applicant intends to extend his trademark protection to cover other goods and services of a given class than those included in the alphabetical list (not expressly mentioned in the Nice Classification), he shall proceed as follows: the applicant shall list all general indications included in the class heading and declare that he requests trademark protection for all goods and services included in the alphabetical list of the given class. He shall also list the specific goods and services not included in the alphabetical list of the given class. It should be stressed that the goods and services not included in the alphabetical list can only be indicated when filing the application, since in the further stages of registration proceedings such a "specification" qualifies as an extension of the list of goods and is therefore not allowed.
3. If the application concerns only some goods or services, the applicant has the following options: he may list the specific goods or services of the given class for which protection is sought (for example in case of class 25 "tennis shoes") or he can use the general indications of the Nice Classification's class heading to name a group of goods or services (for example in case of class 25 the term "shoes"). [He may also indicate the class heading, although the scope of protection shall only cover the specifically indicated, narrower circle without such an indication as well.]

If the applicant used all the general indications of a class heading and failed to make a declaration, the applicant may chose one of the following possibilities to rectify this deficiency at the HIPO's request:

1. Declares that he is requesting protection for all goods and services included in the alphabetical list of a given class.
2. Specifically indicates which goods and services the protection is sought for. In this case the specification can only be extended to those goods and services included in the alphabetical list, otherwise the declaration qualifies as an extension, which cannot be accepted.

The HIPO will list in detail in its methodological guidelines - duly modified in line with the judgment of the Court of Justice - the aspects to be taken into account during the examination of the list of goods and services for which protection is sought for.

4. The HIPO's practice in proceedings for trademark registration during examination of formal requirements of the list of goods

a) In the case of ongoing proceedings with a filing date earlier than the date of publication of the judgment (19 June 2012), in which the list of goods contains all the general indications of a particular class heading, the HIPO presumes that in his application the applicant requested protection for all the goods and services included in the alphabetical list in a particular class, unless the applicant declares that he requested protection for only some goods or services (or also for goods and services not contained in the alphabetical list).

In the case of a list of goods not covering the entire class heading, but using certain general indications of a particular class heading, the HIPO will in all cases examine whether the list of goods in the application can be considered clear and precise, and if an overly general indication or term is used, the HIPO will invite the applicant to make a declaration regarding the goods and services to be covered.

b) In the case of ongoing proceedings where the application was filed after 19 June 2012, applicants using an entire class heading shall in all cases specify clearly and precisely whether the protection is requested for all goods and services included in the alphabetical list or it is to be limited to the goods and services listed in his application. If the list of goods of /in the application includes all the general indications of a particular class heading, but the applicant failed to indicate whether  he would request protection for all goods and services included in the alphabetical list, the HIPO will invite the applicant to make a declaration in that regard. The HIPO - in accordance with its former practice - will also issue an invitation to make a declaration if one of the indications included in list of goods is too general, i.e. it does not fulfil the requirements of clarity and precision. If the applicant fails to make the necessary declaration, the trade mark application shall be deemed withdrawn.

The HIPO has amended its paper-based and electronic application forms. A new box is added to the forms as well to the effect that an applicant using the entire general indication of a class heading shall declare whether his application covers all goods and services included in the alphabetical list of the given Nice Classification class (and whether it also concerns the goods and services not included in the alphabetical list), or the application is restricted to those specifically listed in it. In order to avoid formal defects it is advisable to use the abovementioned forms when filing the application.

The trademark application forms are available on the following site:

http://www.sztnh.gov.hu/urlapok_dijak/urlapok/bejelentesi_urlapok/vedjegy.html

5. Interpretation of the list of goods of trademarks already registered, renewal of trademarks

Given that in general the judgments of the CJEU in preliminary ruling procedures provide an authentic interpretation of EU law, they have ex tunc effect, i.e they apply with retroactive effect to the entry into force of the piece of European legislation concerned, unless their application is expressly restricted. Although judgment C-307/10 of the Court does not contain such a time restriction, in Hungary's case the interpreted law (the Trade mark Directive) only entered into force on the date of its accession to the EU.

In the light of the above, it is clear that under certain conditions, the Court's judgment in Case C-307/10 also applies in cases closed before the date of the judgment. In the case of national trade marks (or trade marks with registration extended to Hungary based on an international application) registered before the publication of the judgment, i.e. after 19 June 2012 and with a filing date of 1 May 2004 or a later day, uniform interpretation of law is needed regarding the list of goods using class headings.

In the case of such trade marks, if the list of goods contains all general indications of a particular class heading, i.e. uses the same wording of the class's class heading, that part of the list of goods is to be interpreted as the registration being extended to all goods or services included in the alphabetical list of the particular class, according to the edition of the Nice Classification in force on the filing date.

When a certified extract is requested from the register regarding such trade marks, the HIPO shall indicate on that document that the scope of registration of the trade mark covers all goods or services included in the alphabetical list (this will also be added to the electronic register sheet of the trade mark concerned). In addition, as a measure of general information, the HIPO will provide information in an information window on the electronic databases available on its website (E-Register, IP Search) about the potential effect of the altered legal interpretation in relation to the list of goods.

For ease of reference, the HIPO provides access to the former issues of the Nice Classification on its official website. Nice Classification >>

We would like to draw the attention of our clients to the fact that, on the renewal of trademarks bearing a filing date of 1May 2004 or a later date and registered before 19 June 2012 of which the list of goods includes all general indications of a particular class heading, the HIPO applies the interpretation described above as well. If the right holder wishes to derogate from that, he shall make a declaration about it in the request for renewal and shall clearly list those goods and services among those included in the alphabetical list for which renewal is requested. Indicating goods or services not being listed in the alphabetical list shall be considered as an inadmissible extension of the list of goods within the meaning of Article 65 (5) of the TM Act.

The HIPO shall not issue a specific invitation for a declaration in the renewal procedure regarding the possibility of limitation. Consequently, unless otherwise stated by the client, the registration of the renewed trade mark extends to goods and services included in the alphabetical list of a given class. However, the right holder recorded in the trade mark register or his representative shall be informed about the abovementioned interpretation in the warning about the expiry of registration.