Will you be affected by EU trademark reform?

The changes to the requirements and process for registering trademarks in the European Union that came into effect on 23 March 2016 will impact many brand owners with trademark rights in the region. The first key deadline of which companies need to be aware relates to changes to class headings.

As of 23 March 2016, the European Union Trademark Regulation (EU TM Regulation) entered into force as part of the so-called ‘Trademark Reform Package’. This date also marks the beginning of a six-month window to update class headings and specifications (via an article 28 (8) declaration).

Click here to read an overview of the changes introduced by the Trademark Reform Package, in terms of both the EU TM Regulation and the changes to national trademark law set out by the EU TM Directive.

Why might class headings need to be updated? Each EU TM contains a description of the goods and services for which the trademark is used, based on one or more class(es) of the Nice Classification System. Under the upcoming changes, owners of EU TMs filed under the Nice System prior to 22 June 2012 may be required to clarify which goods and services the trademark has been registered to protect, if that right is to remain valid under the new system. There is a six-month window, beginning 23 March 2016, in which rights owners can record necessary clarifications.

The requirement stems from the landmark judgment IP Translator (Court of Justice EU, 19 June 2012), which stipulates that all registered trademarks must be described in a sufficiently clear and precise manner to be valid. This has become known as the ‘means what it says’ approach; in other words, the chosen classification terms will be interpreted literally. Importantly, this approach is to be applied retrospectively to existing registrations that were filed prior to 22 June 2012.

Do the changes apply to you? If you are the holder of an EU TM, filed prior to 22 June 2012, and used the (entire) class heading(s) of the relevant class(es), please pay particular attention to the following:

The scope of protection of your EU TM will be dependant on the extent to which the goods and services, for which your EU TM is used, fall under the literal meaning of the class heading(s) of the relevant class(es). If the goods and services for which your EU TM is used do not fall under the literal meaning, you will need to take action by filing an article 28 (8) declaration.

For example: if an EU TM was filed for a boots brand in class 25 using the entire class heading ‘Clothing, footwear, headgear’, the scope of protection of the EU TM will be deemed to cover ‘boots’ as boots fall under the literal meaning of ‘footwear’. No action will be necessary.

However, if the trademark related to e.g. ‘inner soles for footwear’, then the goods will not be considered to fall under the literal meaning of the class heading and, therefore, will not fall under the scope of protection of your EU TM. In that instance, filing a declaration in which ‘inner soles’ are specifically designated, will be necessary.

Why file an article 28 (8) declaration? The reforms give EU TM holders the option to declare that: “their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class (…)” by virtue of article 28 (8) of the EU TM Regulation.

By making an article 28 (8) declaration, an EU TM holder can preserve the (broad) scope of protection of an EU TM as intended on the date of filing. To achieve this effectively, the declaration must designate: all relevant goods and/or services for the class(es) concerned that do not fall within the literal meaning of the class heading, but are included in the so called ‘alphabetical list’ of the Nice Classification System (as per the edition of the Nice Classification that was in force at the date of filing).

When is the declaration due? An article 28 (8) declaration must be made within six months of the entry into force of the EU TM Regulation. If such a declaration is not made before 25 September 2016, the scope of protection of an EU TM will be limited to the literal meaning of the class heading(s) that is/are used. The transitional period cannot be extended.

In summary The EU’s Trademark Reform Package may have major implications for the scope of protection of your EU TM. Therefore, please consider:

• Whether the entire class heading(s) were used when filing your EU TM, and if this is the case:
  • Whether the goods and/or services for which the EU TM is (intended to be) used, fall under the literal meaning of the class heading, and if not;
  • Please contact your trademark attorney to assist you in filing an article 28 (8) declaration before 25 September 2016 in order to preserve the broad scope of protection of your EU TM.

Vague terms We also would like to take this opportunity to remind you of the importance of specifying possible ‘vague terms’ in the description of the goods and services of your EU TM.

In response to the IP Translator requirement of clarity and precision, trademark authorities have compiled a list with terms that by definition are considered to be ‘too vague’ to meet the requirement. If one or more of these vague term(s) have been used in your EU TM application, it is very important to specify these terms if you are to continue to be able to enforce your trademark rights regarding the goods or services affected. This must be done by form as per article 50 of the EU TM Regulation. Although no specific time limit is applicable, it is advisable to amend the relevant terms as soon as possible.

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