Smoking or non-smoking?

Class headings. The ‘general description’ of the different classes in which you can protect a trademark. Since the recent IP Translator decision by the European Court of Justice (ECJ), trademark owners have to study their trademark registration to see if it still provides sufficient protection.

What are class headings?
When registering a trademark, you have to choose for which products or services you wish to protect your mark. All goods and services are classified in different ‘classes’; e.g. “clothing” is class 25, “jewellery” is class 14. To make it even easier there are so called ‘class headings’.

Common practice
The common practice before the European Trademarks Office (OHIM) was, that when you register for the class heading, your trademark covers all goods that fall under that class. Registering for the class heading of class 21 (“Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.“) gets your trademark protected for “aquaria” as well, which fall under class 21. Even if the class heading doesn’t even mentioned “aquaria”.

The recent IP Translator decision puts an end to this.

Clear and precise specifications
Now – very justly so – you will have to describe “clear and precise” what goods you are willing protect. Applying a trademark for the class heading no longer automatically entitles you to protection of all goods or services in that particular class.

Why is this worrying?

First of all, the ECJ did not indicate which class headings are vague and should be clarified.

Secondly, we are not sure what the status is of ‘vague’ specifications of goods/services before the IP Translator case. Are these trademark registration null?

To give an example. Almost all major tobacco manufacturers registered their trademarks for the class heading of class 34: “Tobacco; smokers’ articles; matches“. However, the class heading does not include ‘cigarettes‘. Does this mean all trademark applications have to be refiled to include ‘cigarettes‘? Could be.

Call your trademark attorney
The future is uncertain. More rulings about this will undoubtedly follow. But urges all trademark applicants to review their trademark registrations carefully and consult your trademark attorney if necessary. You don’t want to be vague about being protected.

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