The amending Trade Mark Regulation [1] (the Regulation) came into force on 23 March. We recently summarised the principal changes.

One aspect of the Regulation to be aware of is that it codifies the approach taken by the EU Intellectual Property Office (in the pre-23 March days when it was still called the Office for Harmonisation of the Internal Market) regarding the scope of protection of trade mark specifications. The Regulation therefore confirms that for European Union trade marks (EUTMs) (formerly called Community trade marks), where a trade mark specification is drafted by reference to a Nice class heading or general terms, only those goods and services covered by the literal meaning of the class heading or general term will be protected.

Article 28(2) of the Regulation provides, under the heading “designation and classification of goods and services”, that “the goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought”. Proprietors of EUTMs applied for before 22 June 2012 that are registered in respect of an entire class heading have a six-month grace period (i.e. until 23 September 2016) to make an Article 28(2) declaration to amend the goods and services to include those which they really intended to cover, in addition to the class heading. After the grace period expires, EUTMs will be interpreted strictly according to the literal meaning of the terms included.

You should review your existing trade mark portfolio to see whether you have used class headings in your existing EUTMs declarations and whether you therefore need to make an Article 28(2) declaration. Please do not hesitate to contact us if you would like advice or assistance on this.