As far back as May 2013 the Trademark Offices of the member states of the European Union were seeking a joint interpretation of the IP Translator decision of the Court of Justice of the European Union (dated 19/06/2012), which established the necessity of clearly and precisely identifying the goods or services claimed when filing a trademark. The problem arose particularly for the wordings for the class headings and, specifically, whether these covered all goods/services which were contained in the classes but were not explicitly mentioned.

Following the issuing in May 2013 of a Common Communication on classification by the Office for Harmonization in the Internal Market, the Italian Patent and Trademark Office (IPTO) adhered to a literal interpretation of the class heading. Hence protection was recognized only for the cited goods/services, unless, at the time of filing, the applicant expressly declared their intention of extending protection to all the goods/services in the class in question. But for trademarks that existed prior to the date of the IP Translator decision (i.e. before 19/06/2012), the IPTO recognized that the class headings covered all the goods and services of the class.

Recently there have been new and significant developments. In fact, debate and discussion at EU level between the national Offices has resulted in a more recent Common Communication, dated 20 November 2013, from which it emerged that for 11 general indications (which come under classes 6, 7, 14, 16, 17, 18, 20, 37, 40 and 45 of the classification) the wordings are unclear or inexact, with the consequence that they could not be accepted by the Offices concerned without more detailed specifications. The document establishes that these provisions will be enacted within three months from the date of publication of the Comunication, i.e. by 20 February 2014.

According to the Common Communication, these will however not have retroactive effect. Acceptable substitute wordings will therefore have to be used for the disputed wordings, according to the classification.

It is therefore expected that there will be problems with reconciling the new indications with the previously existing system.

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