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15 August, 2013

The UKIPO has confirmed that it was correct all along in its specification practice by issuing a Practice Amendment Notice (PAN03/13) regarding use of class headings following the IP Translator decision earlier this year.

The IP Translator decision discussed whether use of the class headings alone would be sufficient to cover all goods or services in a class when filing trade mark applications. A test case, it was brought to force a resolution of the uncertainty engendered by the divergent approaches to this issue of the National Offices of the EU and the OHIM.

The decision did not preclude the use of class headings, but stated that some are too vague to meet the requirements for clarity and precision necessary for users to understand the extent of the right claimed in any given registration. The class headings can be used on their own if they sufficiently describe the goods and services of interest. Following discussions between the National Offices of the EU and the OHIM and users of the system, a list of 11 class headings or parts of them (“General Indications”) have been identified which will not be acceptable without further describing the goods or services as the terms used are vague and do not describe the goods/services with sufficient clarity and precision. The 11 General Indications are as follows:

•    Class 6  “goods of common metal not included in other classes”.

•    Class 7   “machines and machine tools”.

•    Class 14 “precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes”.

•    Class 17 “rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes”.

•    Class 18 “leather and imitations of leather, and goods made of these materials and not included in other classes”.

•    Class 20 “goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl,meerschaum and substitutes for all these materials, or of plastic”.

•    Class 37 “repair; installation services”.

•    Class 40 “treatment of materials”.

•    Class 45 “personal and social services rendered by others to meet the needs of individuals”.

In some cases, elements of the wording would be acceptable on their own, for example “machine tools” would be acceptable on its own as it describes a specific type of good.  However, the entire term “machines and machine tools” is not acceptable as the “machines” will need to be specified so that the goods are described with the degree of clarity and precision required to be acceptable.

Following the IP Translator decision and this Practice Amendment Notice, it is increasingly important to ensure that the specification of goods and services filed accurately reflects those for which you require protection.  Whilst the practice in the UK has not changed significantly, in some cases more specific wording is now required to replace the broader terms that were previously accepted.

This new practice comes into effect for all applications filed on or after 5 August 2013. This PAN does not alter existing UKIPO classification practice and no transitional measures are suggested. We agree that it simply serves to clarify the “means what it says” approach which was the majority view amongst the National Offices before IP TRANSLATOR and so local practice will not change.

We would suggest that when considering filing  new trade mark applications, careful consideration of the wording of specifications is made to ensure not only that current and future goods/services of interest are covered, but also that the specification meets the standard of clarity and precision in all respects  to avoid objections on these grounds. If you would like one of our experts to assist in drafting new specifications please let us know.

For further information please speak to Charlotte Duly or your usual Boult Wade Tennant advisor