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In the context of an opposition proceeding, the specification of a trademark covering products/services not included in one class shows difference of practice between the French Trademark Office (INPI) and the European one (OHMI) when assessing the products and services similarity.

The INPI systematically holds as ungrounded the opposition when the prior registration designates products/services not included in class X.

French Examiners consider such wording unclear and improper to disclose immediately and with certainty and constancy the extent of the opposed application.

They feel that immediate disclosure of the extent of the opposition is improper. This consequently needs, prior to bringing an opposition, to first amend the specification so as to enumerate the products and services falling under the problematic wording.

The OHIM adopts the opposite approach insofar as the said wording simply does not lead to any difficulties. In its Decision CLASSIC GIRL of December 21, 2005, the Opposition Division ruled that textile goods not included in other classes (class 24) were similar to lace and embroidery, ribbons and braid; buttons; hooks and eyes, pins and needles without even raising the question of the wording concerned.

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