knowledge 29 June 2016 |

Mind Your Marks

Following recent developments in trade mark law, EU trade mark holders should act now to ensure they continue to enjoy the widest possible trade mark protection for all relevant goods and services.

Changes to EU Rules Regarding Class Headings

One of the many changes introduced by the European Trade Mark Regulation (the “Regulation”) is a change in how classifications of trade marks are interpreted.

Previously, an application for an EU trade mark or an international trade mark designating the EU (an “EUTM”) which included the ‘class heading’ of the relevant NICE Classification was understood to cover all goods and services in that class. Following the decision of the Court of Justice of the European Union in the IP Translator case in June 2012 , only the particular goods and services specified in the registration will be covered.

Under Article 28(8) of the Regulation, however, holders of EUTMs who included the ‘class heading’ in the specification of their EUTM have a short window to notify the European Intellectual Property Office (formerly OHIM or the Office for the Harmonization of the Internal Market) (“EUIPO”) of their intention to include additional goods and services (which were not included in the class heading) in the specification of their trade mark (an “Article 28 Declaration”). An Article 28 Declaration may only be made in respect of an EUTM which: (i) was filed before 22 June 2012; (ii) was registered before the entry into force of the Regulation on 16 December 2015; and (iii) contains the entire ‘class heading’ for the relevant class of goods or services. It is worth noting that the inclusion of other goods and services in addition to those making up the class heading will not prevent the making of an Article 28 Declaration.

To be valid, an Article 28 Declaration must be made by 24 September 2016 and failure to do so will result in the EUTM only having effect in respect of the particular goods and services for which it is registered.

Brexit and UK Trade Marks

As a separate point, in light of the recent Brexit referendum result, holders of EUTMs should also consider their UK trade mark strategies. Although nothing will need to be done immediately, applicants for and holders of EUTMs will need to consider whether they should apply for separate UK trade marks as one of the myriad of legal steps that will be required, assuming the UK does proceed to leave the EU.

 

  1. Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)
  2. C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks

This briefing is for general guidance only and should not be regarded as a substitute for professional advice. Such advice should always be taken before acting on any of the matters discussed.