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Legal alerts / 21 Mar 2016

Updated Legal Alert – EU Trade Mark Reform – Proprietors May Need to Amend Classification

On 15 December 2015, the European Parliament adopted the reform on the Community Trade Mark Regulation and the Trade Marks Directive in its plenary session. The reform introduces significant changes to classification practice of goods and services. Under the previous practice, EU trade mark applications filed using class headings under the Nice Classification covered all the goods and services in all categories falling under that class heading in question.  From now on, the goods and services must be expressly specified in the EU trade mark application.

Effects of the change

The new interpretation on the trade mark scope will have retroactive effects as it will be applied to EU trade marks filed before the revised legislation takes effect. Hence, the goods or services originally intended to be protected under a general class heading might fall outside the trade mark protection.

The Community Trade Mark Regulation will enter into force on 23 March 2016. Owners of EU trade marks filed before 22 June 2012 may within a six-month period as of the date of entry into force declare that their intention at the date of filing was to seek protection in respect of goods or services other than those covered by the strict literal meaning of the class heading. Declarations must be submitted to the EUIPO on 24 September 2016 at the latest.

In practice the literal interpretation of class headings means that, for example, the class heading “Providing of training; entertainment; sporting and cultural activities” of Class 41 is not considered to cover “translation services”, even though these services belong to Class 41. If the afore-mentioned class heading is included in the EU trade mark application and protection is intended to cover the translation services, they must be expressly specified in the list of services. Correspondingly, if an EU trade mark application filed before 22 June 2012 includes the class heading of Class 41 and the owner’s intention has been to cover the translation services, these services must be specifically added to the list of services by 24 September 2016 in order to ensure the trade mark protection. Otherwise the scope of protection will no longer concern translation services.

Actions required

Further actions to ensure the scope of protection granted by EU trade marks depend on the date of application as follows:

  • List of goods and services of EU trade marks filed before 22 June 2012 may be specified as needed in accordance with the new legislation by 24 September 2016.
  • List of goods and services of EU trade marks filed between 22 June 2012 and 22 March 2016 cannot be specified. Trade marks are deemed to cover all the goods and services of the registered class provided that the list has comprised a reference “protection is requested for all the goods/services included in this class in accordance with Nice Classification”. In case such a reference is not included in the application, extension of trade mark protection requires a new trade mark application comprising the specified goods and services for which the trade mark protection is intended.
  • From 23 March 2016 onwards, the EU trade mark applications must include specified and detailed lists of goods and services. The scope of protection will concern only those goods and services expressly listed in the application.

Due to the reform and new classification practices, companies need to review the scope of protection of their EU trade marks and amend the classifications, if necessary. It is recommendable to evaluate all valid trade mark registrations and pending applications in good time to ensure that appropriate protection is obtained or retained.

Our experts will be happy to provide further information on the trade mark reform and changes in classification practices.

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Legal Alert, 16 December 2016: In April 2015, the European Commission, the European Parliament and the Council finally reached a political agreement on the trade mark reform package concerning the Community Trade Mark Regulation and the Trade Marks Directive. The European Parliament  officially approved the reform on 15 December 2015 in its plenary session and it will enter into force in Spring 2016. The aim of the reform is to make trade mark registration systems more efficient, lower costs, expedite the trade mark proceedings and promote predictability and legal certainty within the EU.

Stricter classification rules with retroactive effect – trade mark owners recommended to evaluate sufficiency of their current trade mark portfolios

The rules for classification of goods and services will be updated to reflect the principles set out by the CJEU in the IP Translator case (C-307/10) rendered on 19 June 2012. The goods and services for which the protection is sought must  from now on be identified by the applicant with sufficient clarity and precision. If the applicant uses the general terms of the Nice Classification class headings, the authorities will interpret the class headings according to their literal meaning. As a result, the goods or services originally considered protected under a general class heading might fall outside protection. For example, as concluded in the IP Translator case, “translation services” in Class 41 are not covered by the literal class heading “providing of training; entertainment; sporting and cultural activities” in Class 41).

Under Article 28 of the proposed Regulation, proprietors of trade marks applied for before 22 June 2012 are given the possibility to amend the specifications of goods and services for trade mark applications filed before the IP Translator case within a period of six months from the entry into force of the Regulation. After this six-month period, the scope of protection of the trade marks will be restricted to cover only the goods and services that are covered by the literal meaning of the class heading.

The reform and new practices therefore entail extra work for businesses, as it is necessary that any potentially unclear classifications are reviewed, and amended if necessary. It is advisable to evaluate all valid trade mark registrations and pending applications in good time to ensure that appropriate protection is obtained or retained.

Other amendments

In addition to trade mark classifications, the reform will affect the requirements and scope of trade mark protection. One notable change is that the key requirement of “graphic representation” will be abolished, which enables easier registration of unconventional trade marks. For example, sound recordings will in the future be acceptable as representations of sound marks, provided the specific subject matter of the mark is evident. Another change expected to affect the scope of protection is the new one-class-per-fee-system by which the basic application fee will cover only one class instead of three. The one-class-per-fee-system aims at focusing protection and getting rid of unnecessarily broad trade mark registrations.

The reform will also provide more effective means for trade mark proprietors to fight against counterfeit goods in transit.

The new Directive further aims at creating more effective national opposition and invalidity proceedings. Member States are to provide for efficient and expeditious administrative procedures for revocation of trade marks. Furthermore, trade mark applicants may raise the defence of non-use in opposition proceedings without taking separate legal action. These are much welcomed changes from the Finnish perspective.

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