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Changes to EU trademark registration procedures

16-05-2016

Recent reforms to European trademark law may have implications for your registered trademark(s) in the European Union. Here’s a reminder of the key changes.

On 23 March 2016, the European Union Trademark Regulation (EU TM Regulation) entered into force as part of the so-called ‘Trademark Reform Package’.  Trademarks registered in the European Union (previously known as Community Trade Marks or CTM) are now referred to as European Union trademarks (EU TMs). The Package also introduced a number of large-scale reforms to the registration process.

Classifications of goods and services - declarations due by 25 September 2016
Each EU TM contains a description of the goods and services for which the trademark is used. There are 34 classes covering goods and 11 classes covering services. Each has a general (entire) class headings with the option to specify further. Previously, it was sufficient to simply state the entire class heading; however, due to a number of recent rulings, the Regulation now states that the goods and services for which protection is sought must be sufficiently clear and precise for EU TMs filed before 22 June 2012.

Therefore, if you are the holder of an EU TM, filed prior to 22 June 2012, that used the (entire) class heading(s) of the relevant class(es), please pay particular attention to the following:

Since the entry into force of the EUTM Regulation, the scope of protection of your EU TM is dependant on the extent to which the goods and services, for which your EU TM is used, fall under the literal meaning of the class heading(s) of the relevant class(es). If the goods and services for which your EU TM is used do not fall under the literal meaning, you will need to take action by filing an article 28 (8) declaration.

For example: if an EU TM was filed for a boots brand in class 25 using the entire class heading ‘Clothing, footwear, headgear’, the scope of protection of the EU TM will be deemed to cover ‘boots’ as boots fall under the literal meaning of ‘footwear’. No action will be necessary.

However, if an EU TM was filed in class 25 using the entire class heading ‘Clothing, footwear, headgear’, but is used for ‘inner soles for footwear’, filing a declaration, will be necessary, as those goods are not considered to fall under the literal meaning of the class heading of class 25 and, therefore, will not fall under the scope of protection of your EU TM, unless a declaration in which inner soles for footwear is specifically designated, is filed.

In order words, by making an article 28 (8) declaration, an EU TM holder can preserve the (broad) scope of protection of an EU TM as intended on the date of filing. To achieve this effectively, the declaration must designate: all relevant goods and/or services for the class(es) concerned that do not fall within the literal meaning of the class heading.

An article 28 (8) declaration must be made before 25 September 2016. If you do not file a declaration before that date, the scope of protection of an EU TM will be limited to the literal meaning of the class heading(s) of the class(es) that is/are used. The transitional period (the period until 24 September 2016) cannot be extended.

Vague terms - the sooner the better
The requirement to describe goods and services in a sufficiently clear and precise manner also has implications for terms that trademark authorities consider ’too vague’ to meet the requirement.

For example: the terms ‘machines’ (class 7), ‘repair’ (class 37) and ‘treatment of materials’ (class 40) are now considered to be vague terms. These goods and services need to be specified to be accepted as a new EU TM. In existing registrations these terms must be specified in order to be able to enforce the trademark.

If you have used one or more vague term(s) in your EU TM application, it is very important to specify these terms further, if you are to continue to be able to enforce your trademark rights regarding the goods or services affected. Although no specific time limit is applicable, it is advisable to amend the relevant terms as soon as possible.

An opportune moment to audit your portfolio?
In addition to the aforementioned requirements to assess and update your trademark registration(s), it is also recommended that trademark holders check periodically that their interests are sufficiently covered by their existing trademark registrations. For example, updates may (also) be necessary in case of an extension of a business into new business markets.

For further guidance and insight into auditing IP portfolios, please read our article ‘Time for an IP detox?’.

For more on changes to EU trademark procedures, please read ‘Will you be affected by EU TM reform?’ or contact your Novagraaf attorney for tailored guidance.