2016 has seen the introduction of new legislation that has brought in reforms for the EU trade mark system. The new EU Trade Mark Regulation (EUTMR), which came into force on 23 March 2016 has brought in a number of changes.
One of these changes relates to the use of what is known as class headings. In very broad terms, class headings describe the nature of the goods or services contained in each class within the Nice Classification. This is the system for the classification of the goods and services of registered trade marks. The practice relating to the use of class headings changed with the Court of Justice of the European Union decision in IP Translator. This determined that the description of goods and services for trade marks must be sufficiently ‘clear and precise’ to determine the scope of protection. This meant that class headings are now interpreted literally. So where class headings are used, not every good and service in that class will be covered.
The decision in IP Translator has now been incorporated into the EUTMR. But under Article 28(8) EUTMR, trade mark owners who have filed trade marks prior to 22 June 2012 and used class headings have been given a transitional period of six months to make a declaration of intention to seek retrospective protection beyond the class heading.
For some trademark owners this may not apply if the goods and services needing protection are explicitly mentioned, or clearly covered, in the class heading. But, for others, a declaration will need to be filed by 24 September 2016 to clarify the scope of protection of their marks. These “Article 28 Declarations” will set out the additional goods and services the trademark owner wants to cover. The EU Intellectual Property Office has published a helpful list which sets out examples of terms which do not fall within the literal meaning of class headings.
After 24 September 2016, and where a declaration has not been filed, trade marks which use class headings within their specifications will be interpreted according to the literal meaning of the class heading.
If class headings haven't been used or your trade mark was filed after 22 June 2012, then there is nothing you need to do. If you do think you might be affected by the change, we would be more than happy to assist with a review of your portfolio and to file any declarations with EUIPO on your behalf. Please contact one of our trademarks team for further information.
This publication is intended for general guidance and represents our understanding of the relevant law and practice as at August 2016. Specific advice should be sought for specific cases. For more information see our terms & conditions.