As of 23 March 2016, in terms of new regulation number 2015/2424, a Community Trademark (CTM) will be referred to as the European Union Trademark (EUTM).
A CTM or soon to be EUTM covers all 28 countries of the European Union namely Austria, Belgium, Bulgaria, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxemburg, Netherlands, Portugal, Romania, Spain, Sweden and the United Kingdom, Cyprus, The Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia.
As trademark protection extends to all the countries concerned by means of having to file only one trademark application it is an attractive and highly recommended means of protecting your mark in the European Union.
There will be several new formalities from filing to registration for EUTM’s.
Perhaps the most significant change for existing CTM holders is the introduction of the Article 28 Declaration. Holders of a CTM dating from before 22 June 2012 – which cover entire class headings – will have an opportunity to amend the goods and services to include those which they really intended to cover, in addition to the class heading.
If no Declaration is filed the effect will be that all relevant marks will be automatically limited to cover only the literal meaning of the words in the class heading.
WHAT DOES THIS MEAN?
Trademarks can be classified in up to 45 different classes in terms of the International Nice Classification system depending on the goods and or services of relevance.
According to this Classification System there are 34 classes of goods and 11 service classes, each class designated by a “class heading” which indicates the nature of the goods or services in that class.
In addition to these class headings an alphabetical list of approximately 12,000 examples of the goods and services assigned to the various classes is included in the Classification System.
Where a class heading covers the specific goods intended – for example class 33 which covers alcoholic beverages (except beers) and therefore clearly includes wines and spirits – there may be no need to list out the specific terms and no need for to file an Article 28 Declaration.
The approach is not yet conclusive and will undoubtedly be open to interpretation.
It may be fair to assume in the meantime that the wider class headings may require closer scrutiny. By way of example:-
- The class heading for class 3 is “Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soap, perfumery, essential oils, cosmetics, hair lotions; dentifrices” – For a cosmetic company applying a mark to cotton wool this class heading may not be sufficient because the specification doesn’t state “cotton wool” albeit that it is included in the class;
- The class heading for class 28 covers “Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees” but will this be sufficient for a toy manufacturer applying its mark to remote control cars?
- The class heading for class 30 covers “Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice” but will this be sufficient for a food producer applying its mark to popcorn?
WHY DO CLASSIFICATIONS REQUIRE AMENDING?
The Court of Justice of the European Union (CJEU)in a recent judgment, colloquially referred to as the “IP translator”, provides guidance for how trademark owners in the EU are required to specify the goods and services covered by the trade mark applications.
To date the European Trademark office has adopted the practice that if a specification of goods for a trademark application includes the class heading the registration will cover all the goods or services in the class.
The IP translator ruling changes this – Trademark owners in the EU are required to specify the goods and services covered by their trademark applications. The proposed change that requires specified goods and service specifications for EUTM’S follows the decision in IP translator.
- The specification of goods and services is important because it defines the scope of protection.
- This is relevant to decide whether a trademark registration had been infringed, and also the extent to which the trademark is valid (for example whether it is descriptive in relation to certain goods or services or whether the use of the mark in relation to certain goods or services to maintain its validity after it has been registered for 5 years or more).
For most clients we do not expect the need to file Article 28 Declarations.
While this might be necessary because the class heading that was used does not clearly cover the goods or services relevant to the owner, the details aren’t yet final.
We would strongly suggest that the goods and service class specifications of your European trademarks be closely considered, with the recommendation that further specifications for CTMs / EUTMs be filed with a clear description of the goods and services of relevance.
There will be a limited time between 23 March 2016 and 23 September 2016 in which EU owners can file declarations setting out additional goods and services not covered by the literal meaning of class headings used in their registrations.