The right class matters: system and logic of the Nice Classification may decide 

In trademark comparison or for the proof of use of a trademark, it can be decisive in which class of the Nice Classification the corresponding goods are classified

Facts of the case

In 2011, the applicant Wenz Kunststoff GmbH & Co. KG applied to the EUIPO for an EU trademark for the word mark MOULDPRO for the following goods:

• Class 7: ‘Rapid-release couplings for hoses, hose connection couplings’
• Class 17: ‘Hose couplings of plastic (included in class 17), hoses’

The EUIPO objects to the application and requests that the applicant reclassify “rapid-release couplings for hoses” and “hose connection couplings” included in Class 7 to Class 17. Thereupon, the applicant filed an request for reclassification to that effect. All of the applicant’s goods for the MOULDPRO mark are now in Class 17.

In 2018, the intervener, Mouldpro ApS, files an application for revocation of that mark pursuant to Article 58(1)(a) of Regulation No 2017/1001 on the grounds that that mark has not been put to genuine use in the EU in respect of all the goods for which it is registered within a continuous period of five years.

Both the Cancellation Division and the Board of Appeal of EUIPO grant the application for revocation and declare the contested mark invalid for all the goods at issue, on the grounds that the applicant has failed to prove genuine use of the contested mark for the goods in question, since that mark does not apply to metal goods. The Board of Appeal found that the evidence submitted by the applicant only proved some use in relation to couplings/fittings for hoses, which are exclusively made of metal. Another part of the evidence, while referring to non-metallic hoses, did not contain any indication of the extent of that use.

The applicant then appeals to the General Court, basing its action essentially on the following arguments:

• Incorrect interpretation of the list of goods in Class 17.
• Insufficient consideration of the principle of the protection of legitimate expectations.

Decision of the General Court

The applicant alleges misinterpretation of the list of goods in Class 17 to the extent that the EUIPO division misinterpreted it in so far as none of those goods could be made of metallic materials simply because they belonged to that class.

In particular, rapid-release couplings for hoses’ and ‘hose connection couplings’ are characterized by their function and not by the material of which they are made, which cannot be called into question by their classification in Class 17. These goods could therefore be made of different materials, including metallic ones.

The General Court ruled as follows:

First, the role and meaning of the classification of these goods in a particular class of the Nice Classification must be decided.

It is true in principle that the classification of goods and services in the Nice Classification is purely administrative. However, especially if the description of the goods is so general that it can cover very different goods, it is possible to take the classification into account for the interpretation. According to the applicant, each class is identified by general designations, known as ‘class headings,’ in accordance with the Nice Classification Guidance, which indicate, in general terms, the fields to which the products in the class in question belong in principle.

It is also apparent from the case-law that the goods covered by the contested mark must be interpreted from a systematic point of view, having regard to the logic and systematic nature inherent in the Nice Classification and taking into account the abovementioned descriptions and explanations, which are relevant to determining the nature of the goods in question.

It follows that the examination to determine the goods in question must not be limited to the literal meaning of those descriptions but must also take account of the classification of the goods. 

Consequently, the Board of Appeal was right to interpret the meaning of the goods in question in the light of the class in which they were classified.

Consequently, the interpretation of the goods in question must be determined with regard to their classification in Class 17, taking into account their position in the Nice Classification system. According to the General Comments on the Nice Classification, goods are in principle classified according to their function or intended purpose. However, goods which cannot be classified in that way are classified according to other criteria, such as the material of which they are made.

For example, the heading of Class 17 states that that heading includes materials made of “rubber, gutta-percha, gum, asbestos, mica and articles made of these materials, not included in other classes; plastics in extruded form for use in manufacture; packing, sealing and insulating materials; flexible tubes, not of metal.” Moreover, its explanatory note states that Class 17 includes “principally electrical, thermal and acoustic insulating materials and plastics for use in manufacture in the form of sheets, blocks and rods,” that is, only goods made of non-metallic materials, namely: plastics, unworked, semi-worked. Thus, the classification of class 17 was based on material. 

Secondly, the GC pointed out that metal goods which could not be classified in class 17 according to their function or purpose would be classified in class 6. Accordingly, the scope of protection of the goods in class 17 was also limited to non-metallic materials. 

With regard to the second part of the applicant’s argument that the original application should be taken into account according to the principle of the protection of legitimate expectations, the GC clarifies that goods and services must in principle be designated so clearly and precisely that the competent authorities and also the other economic operators can determine the scope of the protection granted solely on the basis of the list of goods. This was the sole responsibility of the applicant.

The list of goods indicated by the applicant in its original application is therefore irrelevant to the interpretation of the goods for which that mark is now registered. 

The letter from EUIPO reclassifying the goods was merely a preliminary objection to the application for registration of the contested mark, which the applicant could have objected to or proposed reclassification of. However, the applicant had carried out the reclassification itself.

In principle, a person may rely on a breach of that principle only if he has received precise, unconditional and consistent assurances from a competent authority. Such an assurance was not present here. On the contrary, there was a legitimate expectation on the part of the trade mark proprietor and the other market participants that the trade mark would be protected only for those goods for which it was registered.

Tenor of the author

According to the guidance notes of the Nice Classification, goods are in principle classified according to their function or intended use. However, goods which cannot be classified in this way are classified according to other criteria, such as the material of which they are made, in accordance with the logic and systematic and the descriptions and explanations of the Nice Classification referred to therein.

In principle, a person may invoke a violation of the principle of reliance only if he has received precise, unconditional and consistent assurances from a competent authority.

Key takeaway

The selection of classes, especially for broad goods or services, must be made carefully, taking into account the system and logic of the Nice Classification and the headings and explanations set out therein.

A careless classification can lead to misunderstandings and fatal consequences in the collision, defense and enforcement of trademarks with a proof of use that cannot then be provided.

Source: Judgment of the GC of 26.4.2023 in case T-794/21
Picture: Regina Blumenröhr

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