News & Resources
Change to European Trade Mark Law
EU trade mark law will change significantly on 23 March 2016. In particular, the EU Trade Mark Regulation and the corresponding EU Trade Mark Directive will enter into force.
Under the new legislation, OHIM will be renamed as the European Union Intellectual Property Office (EUIPO) and the Community trade mark (CTM) will be called the European Union trade mark (EUTM).
In addition, the filing fee for new EU trade mark applications will only cover the first class (the first three classes are covered at the moment) and additional fees will be needed to cover additional classes.
Up until 22 June 2012, it was possible to file CTM applications using only the class headings of the Nice classification to claim protection for everything covered by the respective classes. Thus, for example, a CTM filed before 22 June 2012 with the specification ‘musical instruments’ in class 15 is now understood to cover all possible goods in class 15, including all musical instruments and their accessories.
In one of the key changes in the law, this broad protection for trade marks filed up to 22 June 2012 will stop. Instead, such trade mark registrations will only cover goods and services falling within the literal meaning of the specification of goods. In the class 15 example above, a trade mark registration (filed before 22 June 2012) will be limited under the new law so that it only covers musical instruments, but not accessories for musical instruments. Thus, a tuning fork is currently covered but will not be covered from 23 March 2016 under the new law.
In recognition of the fact that the scope of protection of a large number of existing marks will be narrowed by the new law, EUIPO will allow trade mark owners to file a declaration under Article 28 setting out additional goods and services not covered by the literal meaning of the class headings used in their registrations.
It will be possible to file an Article 28 declaration only for CTMs that both
- were filed before 22 June 2012 and registered before 23 March 2016; and
- claim protection of entire class headings according to the Nice Edition applicable at the time of the filing date.
Such declarations must be filed between 23 March 2016 and 23 September 2016 and should specify the exact goods and services that the mark is intended to cover. Thus, it will be necessary to file a replacement specification setting out all the goods and services for which protection is required to avoid an unacceptable narrowing of the scope of protection.
If no declaration is filed before the deadline, those trade marks will be deemed to cover only the goods and services within the literal meaning of the class heading.
However, additional goods and services added by an Article 28 declaration will be subject to certain defences. For example, a trade mark owner will not be able to assert an EUTM, with respect to a newly specified good or service under an Article 28 declaration, against a use which pre-dates the declaration. Accordingly, it may be worth considering filing a part-surrender of the mark under Article 50 to limit it to effectively the same goods and services as would be filed in an Article 28 declaration. How the new legislation will operate in this respect is not currently clear and we are monitoring developments.
Nonetheless, it is important to consider taking action now. If you would like our assistance in connection with this matter on any of your marks, or if you would like us to undertake a trade mark audit on your behalf, please contact Andy Cloughley at email@example.com.