As we have previously advised, the EU IPO now interprets class headings in accordance with the literal meaning of the goods or services listed rather than as a claim to all goods or services in the class. This is one of the changes made under the EU trade mark reforms which entered into force on 23 March 2016.
There are transitional provisions for “old” registrations (filed before 22nd June 2012) which cover a Nice class heading. Owners of such EUTM registrations have a six month window, between 23 March 2016 and 23 September 2016, to declare if use of the class heading was intended to cover goods and/or services beyond the literal meaning of the class heading and then to identify to the EU IPO the extra goods and/or services intended to be covered. This can be done by filing a declaration electronically with the EU IPO. For detailed guidance on the change in practice and options available, please see our earlier article.
Only terms that are listed in the Nice alphabetical list in force at the filing date and that are not clearly covered by the literal meaning of the class heading can be accepted. The EU IPO previously issued a list of terms which it deemed not to be clearly covered by the class heading. Unfortunately, with two months to go before the deadline, and no extension of said deadline, the EU IPO has issued a fresh Notice and a new list, which contains a significant number of changes. For example, initially there were no terms falling outside of the class headings in Classes 6, 17, 23, 27, 32, 34, 36, 38, 42, 43 and 45. In the new list, there are terms clearly not covered in every class other than Classes 23 and 32. A copy of the new list can be accessed here.
How can we help?
To reflect these updated changes, we may need to re-run any recent assessment of your portfolio and provide you with an updated detailed analysis. As before, for any EUTM registrations for which we are currently on record as professional representative, we are able to provide this information free of charge. We can also extend this service to other registrations and for a nominal charge we can provide an analysis of all EUTM registrations for specific companies, which may assist in-house teams or overseas counsel with wider reviews of portfolios.
We remind you that if no declaration is filed by 23 September 2016, then the EUTM shall be deemed to extend only to those goods and/or services clearly covered by the literal meaning of the indications.
If you are concerned that your portfolio may not be fit for purpose, but an Article 28(8) declaration is not suitable, then we would remind you that there are other options. These are as follows:
- Article 50 partial surrender – an alternative, perhaps complementary option if a registration covers broad terms, whether full class headings or otherwise, and the registrant may prefer to have a defined list of specific items of interest aligned to actual goods and services where actual goods and services of interest are not otherwise clear.
- Refiling of a fresh application – where the original terms used may not have been appropriate or where business interests have changed.
Whilst a review is necessary before 23 September to take advantage of the option of filing an Article 28(8) declaration, the other two options are not time limited.