The OHMI just announced a change in its practice of examining international registrations designated in the EU in order to respect the lines of Common Communication on the implemetation of IP Translator.
According to information available on the OHIM’s website here.: As and from October 1, OHIM will begin examining the classification of international registrations designated in the European Union (EU), for vague terms.
Why is there a change of practice?
On 19/06/2012 the Court delivered its ruling in Case C-307/10 « IP Translator » in which it stated that applicants seeking protection of a trade mark must identify the goods and services for which the trade mark is to be protected with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.
In order to align the practice of International Registrations designating the EU with direct filing CTMs, the Office has decided to use the possibility, under Article 4(1)b of the Madrid Protocol, of objecting to terms it considers too broad or too vague, and that lack clarity and precision.
What will be objected to?
All terms considered too broad or too vague, and lacking clarity and precision will be objected to.
A description of goods and services is sufficiently clear and precise when its scope of protection can be understood from its natural and usual meaning. If this scope of protection cannot be understood, sufficient clarity and precision may be achieved by identifying factors such as characteristics, purpose and/or identifiable market sector.
When does the change in practice come into force?
The change in practice will affect all International Registrations designating the EU notified by WIPO to the OHIM on or after the 01/10/2014.
What it is very important to think of at the time of a Community Trademark filing as well as of an International Trademark filing designating the European Union?
Because of this new practice, it is highly important to pay very high attention to the craft of specifications of goods/services wordings at the time of these two trademarks filings.
Well-crafted wordings would considerably limit the risk of objection and refusal which can notably significantly impact the delays to obtain registration.
Thanks to our practice and expertise, European IP specialists and practitioners are of valuable assistance in the selection and the crafting of goods/services items to respect the lines of the OAMI new practice, do not hesitate to ask for our support!
Karine Etienne, European Trademark Attorney