We return again to the topic of classification of goods and services in light of the recent approach adopted by the Italian Patents and Trademarks Office for new trademark applications in Italy.

As is known, the “IP Translator” decision of the Court of Justice of the European Union has led to a radical change in the interpretation of class headings by the OHIM (Office for Harmonization in the Internal Market), establishing the need for greater clarity in identifying the goods/services claimed when filing an application for a trademark registration.

This decision has set in motion a process of harmonization by the National Offices of the 28 member states of the European Union, and the Italian Patents and Trademarks Office has been increasingly active and attentive in handling the formal examination of trademarks, placing particular attention on the claims of goods and services of trademarks filed with the IPTO.

In fact, the decision of the Court of Justice of the European Union had already done away with the concept of claiming a class heading in order to obtain protection for all goods/services included in that class, and now the Examiners at the Italian Patents and Trademarks Office have confirmed a consequent change of attitude in accepting claims of the entire class in order to obtain wider protection.

In the past it was possible, when claiming a given class, to insert a statement of the applicant’s intention to extend protection to all the goods/service in the class of specific interest.

However, further deliberations by the Italian Patents and Trademarks Office have led the Examiners to maintain that a specific list of goods/services is the manifestation of the desire to restrict protection to only the goods/services cited and that this, therefore, conflicts with simultaneously extending protection to all the goods/services in the class claimed.

The end result of the decision of the Court of Justice of the European Union is therefore still to be defined. Pending a Ministerial Circular that will formally state the guidelines to follow when filing trademarks, it is even more important to arrive at the scope of protection that is most accurate and most suitable, in accordance with the needs of each specific client.

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