A recent reform to the use of class headings in the European Community increases the onus on trade mark applicants to clearly state the goods or services for which the owner intends the resulting trade mark registration to cover. Owners of existing European Community trade mark registrations should consider a review of these to determine whether it may be necessary to amend their specifications and detail specific goods and services.
The reform acknowledges the 2012 decision of the Court of Justice of the European Union in IP Translator. Under the new regulation, a trade mark registration which specifies a class heading of the NICE classification of goods and services will only be protected for those goods and services which are literally included in that class heading. This protection will not extend to the goods or services listed in the actual class itself.
Class headings set out, in a limited way, the kinds of goods or services that fall within each of the 45 classes of goods and services. The actual goods that fall within a particular class itself are much broader and are by no means all covered in the wording of the class headings. For example, the class heading for class 24 reads “textiles and textile goods, not included in other classes; bed and table covers”. Class 24 itself includes a much more extensive range of goods which are not necessarily covered by the terminology used in the class heading. For example, “blankets”, “mosquito nets” and “place mats, not of paper” are classified in class 24 but are arguably not covered by the wording of the class heading itself. Once the reform is in place, this protection may not extend to such goods where the class heading is used.
Implications for owners of existing trade marks
An owner of a European Community trade mark registration which covers at least one whole class heading and was registered prior to 22 June 2012 will have the opportunity to amend their registration by detailing their actual goods and services. This will be achieved by stating goods or services which apply to the class but which are absent from the class heading. There will be, however, only a limited window of opportunity to amend such registrations.
Regarding the goods or services that can be declared, the specification of goods and services will not be limited to the literal meaning of the class heading but must cover goods and services listed in that class in the version of the NICE classification which was in force at the time the owner’s application was originally filed.
Applications to amend class headings by detailing the specific goods and services intended to be covered by the registration can be submitted from 23 March 2016 when the new regulation will come into force.
Owners will have until 24 September 2016 to lodge an amendment application at the European Union Trade Mark Office.
If no amendment application is filed or if it is not filed until after the amendment period has closed, the trade mark registration will only cover the goods or services specified in the literal meaning of the class heading.
Once the regulation comes into force, new trade mark applications must clearly state the goods or services which the owner intends the resulting trade mark registration to cover. Failure to do so will lead to a restrictive interpretation resulting in protection for goods or services only included in the literal meaning.
Filings prior to 22 June 2012: Only trade marks consisting of a whole class heading are eligible to be detailed.
Filings between 22 June 2012 – 23 March 2016: Trade marks consisting of a full class heading are not eligible to be detailed. Trade marks containing a notice stating the goods and services in the specified class are required to be protected will be protected for the whole corresponding class.
Filings after 23 March 2016: The specifications of goods or services must be precisely drafted. Simply stating “protection is requested for all the goods/services in this class” will be insufficient.
Baldwins recommends a review of your European Community trade mark registrations which pre-date 22 June 2012 to determine whether it may be necessary for you to detail your specific goods and services. This will be an important measure to accurately define the scope of your registered protection and aid in the enforcement of your trade mark rights.