The Nice Classification conundrum

Understanding the Nice Classification can be challenging. For instance, why do alcoholic beverages fall in class 33, except for (alcoholic) beer, which falls in class 32? Why are there two classes for beverages, while other classes, such as class 9, cover a broad range of goods, which could easily be separated into several classes?

A recent development highlights the problem: Why are all virtual goods for ‘the next big thing’, the Metaverse, classified in class 9 [see here]? This makes trade mark clearance unnecessarily costly, if the ‘real’ goods are found to be similar to virtual goods (which seems to be the prevailing opinion at the moment). The consequence is that you always have to include class 9 in your trade mark clearance search for physical goods.

It is not just the classification, but also the interpretation of terms in the Nice Classification, which can be challenging. Is ‘coffee’ in class 30 the beverage or the coffee beans, and if the latter: raw, roasted or milled? Similar questions apply to ‘tea’.

As trivial as these questions might appear, the answer can make or break your trade mark protection, as the recent General Court judgment in Wenz Kunststoff v EUIPO - Mouldpro (MOULDPRO) (case T-794/21) shows:

Background

On 6 June 2011, Wenz Kunststoff GmbH & Co. KG (‘Wenz’) filed an application for EU trade mark MOULDPRO. The application covered--

• In class 7: ‘rapid-release couplings for hoses, hose connection couplings’, and
• In class 17: ‘hose couplings of plastic (included in class 17), hoses’.

EUIPO requested Wenz to reclassify ‘rapid-release couplings for hoses, hose connection couplings’ from class 7 to class 17. The examiner did not provide any reason for this request, stating only that the application would be rejected if Wenz failed to comply. Wenz agreed to the reclassification.

In 2018, Mouldpro ApS filed an application for revocation, alleging non-use of Wenz’ MOULDPRO trade mark. Wenz submitted evidence of use for couplings/fittings for hoses that were made of metal. The Cancellation Division of EUIPO and the Board of Appeal found that class 17 only covered non-metal goods. Therefore, Mouldpro’s revocation application was successful. Wenz appealed to the General Court. 

The General Court’s decision

The General Court agreed with the Board of Appeal.

The judges acknowledged that the literal meaning of ‘rapid-release couplings for hoses’ and ‘hose connection couplings’ also covers metal goods because it includes a large variety of goods, irrespective of their characteristics and their material.

However, the General Court did not stop there but also considered the Nice Classification. Although the classification is meant to be merely for administrative purposes, the General Court held that it is also relevant in determining the scope and meaning of the goods, in particular where the description may cover a variety of different goods.

In ascertaining the meaning of a term in the list of goods and services, the logic and the system of the Nice Classification, the class headings and the General Remarks and Explanatory Notes are to be considered. This exercise must be based on the edition and version of the Nice Classification in force at the filing/priority date of the trade mark.

According to the General Remarks to the Nice Classification, goods are in principle classified according to their function or purpose. Goods that cannot be classified in that way are classified by applying other criteria, such as the material of which they consist.

The General Court found that classes 6 and 17 are among the classes that include unworked or semi-worked materials, as well as finished products that are not included in other classes. They are thus classified according to their materials. Class 6 includes metallic materials and goods made thereof, while class 17 includes non-metallic materials and goods made thereof. Therefore, all goods classified in class 17 must be understood to be made of non-metallic materials.

As a consequence, the terms ‘rapid-release couplings for hoses’ and ‘hose connection couplings’ in the contested trade mark must be construed to mean that they are made only of non-metallic materials.

The fact that the term ‘hose couplings of plastic (included in class 17)’ in the contested trade mark’s list of goods explicitly mentioned the material was deemed irrelevant. Each term in the list of goods and services must be construed separately.

EUIPO’s request for reclassifying the terms in class 7 in the course of the application proceedings was deemed to not have any relevance. The General Court held that it is each applicant’s responsibility to provide a clear and precise specification of the goods. Wenz could have objected to EUIPO’s request or proposed another class for the terms requested to be reclassified.

EUIPO was not required to ascertain whether the proposed reclassification corresponded to Wenz’ intentions. Nor could it have known for which goods Wenz used or intended to use the mark.

Comment

The General Court’s judgment shows that the literal meaning of a term can be misleading, and that the correct classification of goods and services is essential. It is always a good idea to consult resources such as TMclass when drafting the list of goods and services. If a searched term appears in different classes, close attention should be paid to what the term actually covers.

Picture is by Mustafa ezz and is used under the licensing terms of Pexels.