how clear is your Community trade mark specification 2

Anything to declare – how clear is your EU trade mark specification?

Under the old practice, the EUIPO and some other EU member states took the view that the class heading covered all goods or services in the class. So, for example, in class 35 the heading is “Advertising; business management; business administration; office functions”. This was interpreted as meaning that all services in the class were covered, including services like vending machine services and psychological testing which did not fall within the literal interpretation of the wording of the class heading.

Some practitioners filed trade marks using these class headings as a shortcut to listing all the goods and services in the class, whilst others filed trade marks with the class heading and subsequently specified the goods or services of interest.

Either way, EUIPO is providing the proprietors of trade marks filed between 1 April 1996 and 22 June 2012 with a limited period of grace in which to clarify the scope of their trade mark specifications by filing a declaration that their intention when filing the application had been to seek protection in respect of goods and services beyond those covered by the literal class heading.

We therefore recommend that you review your existing portfolio of EUTMs to identify any trade marks containing class headings filed before 22 June 2012 (if you have not done so already). Any declaration needs to be filed between 23 March and 24 September 2016 (inclusive).

If no declaration is filed, the relevant trade mark registration will be limited to the literal meanings of the goods/services included in the class headings.

It is important to note that there are “built in” protections for third parties which may be affected by the changes. For instance, a trade mark proprietor is not able to rely on its rights:

  • to prevent a third party from continuing to use a later trade mark in relation to goods/services where its use started before the proprietor amended its EU trade mark specification pursuant to a declaration and provided the third party’s use did not infringe the proprietor’s rights based on a literal meaning of the goods and services in the class heading.
  • to oppose an application or apply to invalidate a later trade mark where the third party’s application was filed or in use before the declaration was made and the use of the third party’s trade mark does not infringe the proprietor’s trade mark right based on the literal interpretation of the goods or services in the class heading.

Roy Crozier, a partner in the Intellectual Property Team said: “This is a unique opportunity to review your EU Trade Mark portfolio and take steps to clarify the goods and services covered by your rights. Rights holders may also be able to extend the scope of protection by listing goods and services which they are now interested in but which are not covered by the relevant class heading. Consequently, I would encourage all rights holders to review their portfolio quickly and take advantage of the grace period provided by EUIPO”.