If your company's trademark portfolio contains Community Trademarks (CTM) that were applied for prior to June 22, 2012, but registered after that date, please note the following regarding the new Regulation (EU) No 2015/2424 (amending the CTM Regulations in Europe), which will enter into force on March 23, 2016 (the “Reform”).
As part of the Reform, "class headings" in a trademark registration shall be interpreted as including only those goods or services clearly covered by the literal meaning of the class headings themselves. Thus, unless one of the steps below is taken, this may have the effect of narrowing the scope of protection of your CTM registration[s]. For example, a CTM registered for, inter alia, "clothing, footwear, headgear" under class 25 would have presumably covered wristbands under “clothing” before June 22, 2012. However, after the Reform, the term wristbands will most likely not be covered by the literal meaning of the class heading and therefore the scope of protection will be narrowed.
Accordingly, in order not to prejudice owners of CTMs filed before June 22, 2012, the Reform allows such owners to file, until September 24, 2016, a request to add to the class heading specific goods or services that the trademark owner intended to be covered under the class heading. This is called an “Article 28 Declaration”.
Alternatively, the owner may seek to amend the class heading by replacing it with the alphabetical list of most (but not all) of the applicable goods or services included in the particular class. It is preferable that this type of amendment be made before March 22, 2016.
If your company’s trademark portfolio includes CTMs applied for before June 22, 2012, but registered after that date, we recommend that you contact us to determine whether such amendments are appropriate for your situation.
Please note several additional provisions of the Reform which might be of interest:
- The fees will be changed to one-class-per-fee instead of three-classes-per-fee. This is a significant change.
- Third parties will be given the opportunity to file observations from the time they become aware of an application.
- Third parties may file an additional opposition regarding the same CTM even after the end of the opposition period for such CTM provided that the initial opposition proceedings have not been concluded.
- It will be possible to register certification marks (this option will enter into force 21 months after publication of the Regulation).
- The “Office for Harmonization in the Internal Market (OHIM)” will be called the “European Union Intellectual Property Office (EUIPO)”, and the “Community Trade Mark” will be renamed the “European Union Trade Mark”.