Extent of protection sought must be identified by applicants with sufficient clarity and precision to enable interested parties to determine the TM extent of claim on that basis alone
In certain EU countries this was achieved by indicating a detailed list of the goods/services, while in other EU Countries and at the CTM level it was permitted to claim the entire goods/services by indicating the so called class headings.
The IP Translator (case 307/10).
For the Court of Justice good and services must be identified by the applicant with sufficient clarity and precision. Class headings can still be used, but the TM offices will have to make a case by case assessment.
Herebelow the conclusions of the Court of Justice:
We hereby publish a recent decision of the General Court of the European Union (Seventh Chamber - Judgment of 22 September 2011) concerning the admissibility of earlier mark’s proofs of use in the cancellation proceedings of a CTM.
The facts of the case are briefly summarized as follows.
In 2006, acting for CESEA GROUP, we filed an opposition to the Community Trademark MANGINI based on the Community Trademark MANGIAMI. Counterparty brought, in response, an action for cancellation of our client’s CTM on the basis of Italian, French and German national priorities.
We won at first instance, and the cancellation was rejected for lack of evidence of use.
That decision was reversed on appeal: the board of appeal deemed (now we can say wrongly) that the counterparty could integrate with additional documentation produced on appeal the evidence of use produced in the first instance proceedings.
On 11 July 2011 the Italian Patent and Trademark Office (UIBM), published on its website the first Italian Trademark Bulletin. The current issue (“Bollettino N.1 del 11 luglio 2011”) can be found in PDF format at http://www.uibm.gov.it/uibm/dati/BollettinoMarchi.aspx.
The publication of the online Bulletin, which from now on will be released monthly, is one of the final implementation steps of the new “opposition” system for Italian trademarks, as provided for by Articles 174 to 184 of the Italian Industrial Property Code, implemented by a set of subsequent decrees (the Ministerial Decree no. 33/2010 of 13 January 2010, the Legislative Decree no. 131/2010 of 13 August 2010, and finally the Ministerial Decree of 11 May 2011).