Following the IP TRANSLATOR decision of 19 June 2012 by the ECJ, that we have already detailed, a decision by the Benelux office has been rendered applying these principles.
In its 6 March 2014 HITMAN! decision the Benelux Office considered that the “paper, cardboard and goods made of these materials not included in other classes” products in class 16, were not consistent with the clarity and precision requirements raised by the IP TRANSLATOR decision.
In accordance with its 20 November 2013 communication, the Benelux Office now applies the rule that in opposition proceedings, the consequences of a lack of clarity and precision shall be borne by the Party exploiting these products or services.
In an opposition where one Party invokes vague terms although the products and services of the other Party are sufficiently clear and precise, the Benelux Office will decide in favour of the latter. Thus, in its HITMAN! decision the opponents products (clear and precise) were considered to be sufficiently similar to the “paper, cardboard and goods made of these materials not included in other classes” products.
General Class Headings, such as for the aforementioned products, are not all considered as being sufficiently clear and precise. They cannot therefore be regarded as offering a comprehensive protection and can even present certain risks.
We invite you to contact us in order to review the specifications of goods and services of your most important trademarks and assure you of the scope of their protection in relation to products for which they are used.
Additional precisions can always be made to the specification of goods and services through a limitation. Far from limiting the scope of your trademark this would, on the contrary, establish its scope.
