It has been just over a month since the Office for Harmonisation in the Internal Market (OHIM) became the Europe Union Intellectual Property Office (EUIPO). In addition to the renaming of the office, a number of changes to procedures and pricing came into effect on 23rd March 2016, the first of a two stage process. The second stage will take effect on 1st October 2017.
Of all the changes made, the most significant for trade mark proprietors to consider is the 6 month period which started on 23rd March 2016, during which specifications of goods of trade marks filed prior to 22 June 2012 which recite the full Nice class heading can be amended to particularise ‘orphan’ terms, under Article 28(8) of the amending EU trade mark Regulation. This 6 month period is non-extendible, so consideration of registered marks applied for during the relevant period is vital.
This period is not an open invitation for trade mark proprietors to amend and add terminology to the specifications of goods of their existing registrations. The purpose is only to allow inclusion of terms listed in the Nice alphabetical list at the time of filing which cannot be read literally from the class heading. Guidance from the EUIPO to clarify matters has been published. It is essential for proprietors of trade marks who intended, or even now intend to, protect any of these listed goods or services to make amendments to their specification by 24th September 2016.
It is also vital to remember that these amendments have no retroactive effect on third parties as this would be a violation of the legitimate expectations or acquired rights of third parties who were using, or applied for a mark, before the changes took place.
In the heat of discussions regarding the opportunities to amend specifications, commentaries have been published discussing the opportunity to amend by limitation under Article 50 EUTMA. Amendment by limitation can be carried out at any time, and clarification is not restricted to those goods listed in the Nice alphabetical list at the time of filing the application. As this is a limitation procedure, the limited goods are considered to have been covered by the registration since the time of filing, counter to Article 28(8) amendments which only come into effect from the time when the amendment is made and cannot be enforced against intervening rights holders.
It should be noted that the amendment must limit the scope of protection of the registration by removal of unclear terms and these terms can only be clarified with terms which do not substantially change the trade mark or extend the list of goods and services and thus could not include ‘orphan’ terms. Terms which lack clarity and precision have been identified by the EUIPO and can be reviewed here from page 8 onward. In summary, Article 50 is not an alternative to amendment under Article 28(8) EUTMR as it cannot be used to add orphan terms into the specification of goods.