The EU Narrows the Scope of Protection for Class Heading Designations by Dennis S. Prahl (Member of the Standing Committee on Trademarks)
Effective 23 March 2016 the amended EU Trademark Regulation (EUTMR), Article 28, will formally introduce a more restrictive approach to the treatment of specifications of goods and services in Community Trademark applications and registrations (“CTMs”), by codifying the European Court of Justice’s judgment in the IP Translator case.
Narrowing the Coverage: Class Headings Will Only Cover the Goods and Services That Fall Within Their Literal Meaning
Effective 23 March 2016, all owners of CTMs (which will be renamed European Union Trade Marks (“EUTMs”)) are required to designate with specificity the goods and services they are seeking their applications to cover, instead of relying on the general indications of the class headings for broad coverage.
Prior to the IP Translator case, it was the practice of the Office for Harmonization in the Internal Market (“OHIM”) to allow applicants to specify the general indications of class headings as their designated goods and services, which in effect, were considered to protect all of the goods and services within that class. After IP Translator, in 2012, the OHIM President issued a Communication establishing that class headings would no longer cover all the goods and services that fall within the class, but rather, would only cover those goods and services that fall within their literal meaning. Article 28 now codifies that practice.
Applicants may continue to use class headings, but if the specified goods and services are not clearly described by them, then the applicant must also include the specific goods and services of interest.
Eligible EUTM Owners Have Until 24 September 2016 to File a Declaration to Amend their EUTMs
Owners of EUTM registrations filed before 22 June 2012 that utilize the entire class heading of at least one Nice class, may apply to amend the EUTM (at no cost) to include the goods and services that they had intended to cover at the time of filing. This transition period will not extend to pending applications (applications filed before 22 June 2012, but have not yet proceeded to registration).
On February 15, 2016, the OHIM President issued a Communication establishing the framework for declaration submissions. EUTM owners may submit a declaration if: (1) the specification designates the goods and services of the entire class heading (those who only included partial class headings are not eligible); (2) the goods and services that were intended to be covered are not clearly represented by the literal meaning of the class heading; and (3) the intended goods and services are listed in the Nice Classification edition in force at the time of filing. Declarations may not limit a specification to goods or services already covered by the language of the class heading.
These provisions will also apply to EU designations of International registrations, filed under the Madrid system.
Owners of EUTMs that claim class headings should review them to ensure their goods and services of actual interest are covered and in the event that they require amendment, they should take advantage of the transition period afforded to the