Alan Pike UK Intellectual Property Office

1. Liaison Meeting June 2008 OAMI Class Headings Alan Pike UK Intellectual Property Office UK Intellectual Property Office is an operating name of the Patent Office

2. Why raise this as an issue? Marques survey (The Association of European Trade Mark Owners) 50% support UK view 50% Support OHIM view Differing interpretations may lead to problems UK Intellectual Property Office is an operating name of the Patent Office

3. What is a class heading? Nice Classification (9th Edition) ‘1. The class headings indicate in a general manner the fields to which the goods and services in principle belong’ ‘2. For ascertaining the correct classification of each individual product or service the Alphabetical List of goods and services and the Explanatory Notes, relating to various classes, should be consulted.’ UK Intellectual Property Office is an operating name of the Patent Office

4. Why do class headings exist? An indication in principle, cannot be exhaustive A guide, to indicate examples of the goods or services which a particular class would contain Allowable in the UK as a specification on the form of application But, would not be taken to include all goods or services in that class – only those listed UK Intellectual Property Office is an operating name of the Patent Office

5. Examples None of the class headings for classes 1 to 34 (goods only) contain any reference to ‘parts and fittings’ so such goods are not covered by a class heading. UK Intellectual Property Office is an operating name of the Patent Office

6. Examples Class 12 ‘Vehicles; apparatus for locomotion by land, air or water’ This does not include ‘parts and fittings for cars’ or repair outfits for tyres’ etc… UK Intellectual Property Office is an operating name of the Patent Office

7. Examples Class 20 ‘Furniture, mirrors, picture frames; goods (not included in any other classes) of wood, cork, reed, cane, wicker, horn, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes for these materials, or of plastics ’ This does not include ‘sleeping bags for camping’ UK Intellectual Property Office is an operating name of the Patent Office

8. Examples Class 37 ‘Building, construction, repair, installation services’ This does not include ‘vermin extermination’ UK Intellectual Property Office is an operating name of the Patent Office

9. Why does the UK-IPO take this view? According to the Nice Classification a class heading is a general guide to goods or services contained within a class A trade mark application requires a list of goods or services This is clear from the wording of Article 26(1)(c) which, like our own Section 32(2)(d) requires such a list. UK Intellectual Property Office is an operating name of the Patent Office

10. Why does the UK-IPO take this view? According to the Nice Classification a class heading is what it says but when it is placed on an application form as a specification of goods or services it ceases to be a class heading. On an application form it is no more than a list of goods or services. Cannot be interpreted as providing cover for goods that are not contained with this list because that would be a widening of the specification UK Intellectual Property Office is an operating name of the Patent Office

11. Why does the UK-IPO take this view? To widen a specification would be contrary to our Section 39(2) and Article 44(2) Therefore, an application in Class 20 limiting the specification to ‘Sleeping bags for camping’ would be refused by the UK-IPO – as a widening of the specification. UK Intellectual Property Office is an operating name of the Patent Office

12. Why is this important? The rights granted must be clear with legal certainty as per POSTKANTOOR Rule 2 of the OHIM Implementation regulation indicates that specifications should ‘indicate clearly the nature of the goods and services’. Article 26 of the Regulation itself requires a ‘list of the goods and services of which the registration is requested’. UK Intellectual Property Office is an operating name of the Patent Office

13. Why is this important? Difficult for later applicants to ascertain whether there would be conflict between specifications General public, unrepresented applicants and rights holders would not identify the list of goods and services as a class heading. Assumption that the application is limited to the goods or services appearing on that list UK Intellectual Property Office is an operating name of the Patent Office

14. Why is this important? Any class heading listed as a specification would have to be read in conjunction with the WIPO guide. The list of goods and services is not ‘self contained’ Increase in cases before the courts Confusion as the breadth of specifications would differ in the OHIM and certain other member states UK Intellectual Property Office is an operating name of the Patent Office