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"Undefined” terms of the Common Practice on the General Indications
of the Nice Class Headings
“To be similar, or not to be similar, that is the question!"
ABSTRACT OF PAPER
By Dr. Andreas Renck, Hogan Lovells (Alicante) SL & Cia. ES
It is well known that the Common Communication on the Common Practice on the General Indications of
the Nice Class Headings (hereinafter "the Common Communication") of 20 February 2014, issued jointly
by OHIM and the trade mark Offices of the European Union, identified 11 non-acceptable general
indications lacking the required clarity and precision (the so called "undefined terms"). It was pointed out
that these general indications cannot be accepted by the participating Offices without further
specification.
The consequences of this Common Communication has been widely analysed when a trade mark
application is at issue, but only few may have noticed that it has had an impact also on contentious
proceedings before OHIM. The purpose of my presentation is therefore to draw the attention of
practitioners and brand owners to these cases in which protection was denied to marks comprising
services too vaguely defined.
The decisions that will be presented are both from the OHIM's Boards of Appeal and are the following:

decision of the Second Board of Appeal of 5 February 2014 in Case R 413/2013-2
(HOMEENERGY / HomeEnergy (fig.));

decision of the Fourth Board of Appeal of 2 February 2015 in Case R 391/2014-4 (POWRMATIC
/ POWERMATIC).
They are both final, i.e. no appeal against them was filed before the General Court in Luxembourg. In
both cases the earlier CTM on which the opposition was based covered "repair; installation services" in
class 37, which are not precise enough pursuant to the Common Communication.
In the "HomeEnergy" case the Board annulled the Opposition Division decision which found those
services complementary and therefore similar to the applicant's goods in classes 7 and 9. However, the
Board found them too vague and comprehensive. If the party had also registered the mark for goods,
they would have been considered to cover services relating to those goods. Since the earlier CTM
(which was the only right on which the opposition was based) did not cover any goods, the Board
concluded that it was impossible to compare the respective specifications and the opposition based on
these services was rejected. As the remaining services comprised by the earlier mark were held
dissimilar to the applicant's goods, the opposition was finally rejected in its entirety.
Another recent decision by the Board ("Powermatic" case) followed the same approach. At first instance
Opposition Division found "repair; installation services" similar to several goods in class 9 of the
contested CTM. The Board of Appeal, however, took the view that such an indication is not sufficiently
clear and "any uncertainty must go to the detriment of the respondent" (paragraph 29). The conflicting
goods and services were considered as being "different in nature, destination and purpose" (paragraph
34). The opposition based on the earlier CTM containing such a services was dismissed.
The two decisions above illustrate the restrictive approach sometimes taken by the Boards towards
"undefined” terms. The OHIM Guidelines, which specifically deal with installation, maintenance and
repair services at page 37 of the chapter on comparison of goods and services, do not report or mention
this line of case law. Nevertheless practitioners and brand owners should be aware that it exists as it
may entail limitation of their ability to enforce their rights if they contain terms considered to be vague
and not sufficiently clear and precise.
Before closing, I should mention the judgment of the General Court ("GC") of 27 February 2014 in case
T-229/12 (Vogue) in which the CTM application for the figurative mark "VOGUE", covering a range of
goods in class 18 including "accessories", was opposed on the basis of inter alia the earlier CTM
registration "VOGUE" (word) covering "umbrellas" in class 18.
The Opposition Division and the Board of Appeal upheld the opposition and rejected the CTM application
for inter alia "accessories". However, GC held that it is impossible to assess their degree of similarity
with "umbrellas", protected by the earlier signs, because they are not sufficiently identifiable. The Board's
decision was therefore annulled in that regard (but confirmed for the rest) and case remitted back to
OHIM.
The GC judgment differs to a certain extent from the two Boards' decision in the "HomeEnergy" and
"Powermatic" cases. Firstly, "accessories" is not one of the eleven terms set out in the Common
Communication. Secondly, it is contained in the specification of the CTM application, not in that of the
earlier mark.
The final outcome of the case was eagerly awaited, but the Board's final decision, handed down on 19
January 2015, did not touch upon the issue. The Board realised that actually "accessories" had never
been opposed by the owner of the earlier mark and concluded that the Opposition Division, the Board of
Appeal and the General Court, when deciding on "accessories", decided ultra petita.
Finally, potential solutions for OHIM to adapt will be presented, in particular whether OHIM should invite
opponents to clarify undefined terms or not and which impact the upcoming changes to the CTMR and
Trade Mark Directive will have in this respect.
"Undefined” terms of the Common Practice on the General Indications of the Nice Class Headings
“To be similar, or not to be similar, that is the question!"
Andreas Renck
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