Interpretation of the Nice International Classification by the Spanish Patent and Trademark Office (OEPM): Consideration of the Classification in Force at the Time of Filing

Opposition of October 23, 2023 es-AP-M4137119

In the context of an opposition filed on October 23, 2023, against a Spanish trademark application, the OEPM ruled on the interpretation of the Nice International Classification.

In this case, the defendant raised the issue of non-use of the opposed trademarks. According to Article 21.bis.3 of Royal Decree 687/2002: "the proof of use of the trademark shall include information on the place, duration, extent, and nature of the use of the opposed trademark in relation to the goods or services for which the opposition is based."

The nature of the use posed a difficulty as the evidence provided by the opponent justified use for "dietary supplements for the treatment of menopause symptoms," while the trademarks are registered for "pharmaceutical preparations."

To justify the discrepancy between the actual use proven and the wording of the trademarks as registered, the opponent argued, among other things, the absence of the term "dietary supplements" in the 7th and 8th editions of the Nice International Classification, which were in force at the time of filing.

The OEPM accepted this argument and considered that "dietary supplements for the treatment of menopause symptoms" could be considered as an integral part of the general category of "pharmaceutical preparations" covered by Class 5 of the Nice International Classification.

“The evolution of the terms of the Nice Classification in its successive editions is therefore one of the factors to be taken into account in the analysis of the discrepancy that may exist between the original wording and the goods or services for which the trademark is actually, subsequently, used.”