The Office for Harmonization in the Internal Market (OHIM) has issued some guidance for Community Trade Mark owners considering amending the goods/services covered by their marks under Article 28(8) of the new EU Trade Mark Regulation.
We have previously reported on the pending reforms to the trade mark regime across Europe. A number of reforms to the Community Trade Mark system will be effective on 23 March 2016 when the new EU Trade Mark Regulation comes into force. From that date, Community Trade Marks will become known as EU Trade Marks and OHIM will be re-established as the EU Intellectual Property Office.
Changes to the interpretation of class headings
One of the most important of the reforms introduced by the EU Trade Mark Regulation is to the interpretation of class headings. CTMs are registered in one or more classes of goods or services. The classes are found in the ‘Nice Classification’ and there are 45 in all. Each class has a class heading (a summary of the type of goods/services covered by the class) and an alphabetical list of the individual goods/services falling within the class.
When applying to register a CTM, it has always been acceptable to refer to the class heading (instead of, or in addition to, listing some individual goods/services from the alphabetical list). For example, you could apply to register a mark in class 25 covering ‘clothing, footwear and headgear’. CTMs registered in this way were deemed to cover all of the goods/services in the alphabetical list relevant to the class applied for. However, a decision of Europe’s highest court, the Court of Justice of the European Union (CJEU) on 19 June 2012 changed that position. This was known as the IP Translator ruling. As a result, from 23 March this year, CTMs with a class heading will be deemed to cover only those goods/services that fall within a ‘literal interpretation’ of the heading. The impact could be that the protection afforded by some CTMs will be limited or potentially even ineffective as a CTM may no longer cover the goods/services that it did previously.
What can CTM owners do?
As part of the EU trade mark reforms, owners of CTMs applied for, or International Registrations designated or subsequently designated to the EU, before 22 June 2012 with a class heading are being given an opportunity to rectify their registrations. They will be able to add specific goods/services from the alphabetical lists corresponding to the classes within which the CTM is registered to reflect the goods/services actually provided under the trade mark. This will define the scope of the mark and ensure that the CTM continues to provide effective trade mark protection.
OHIM’s guidance (more properly known as a ‘Communication’) has cleared up one area of uncertainty surrounding rectification of the goods and services. It was not known whether the ability to rectify was available only where a CTM used just a class heading in any given class or whether it was also available where a class heading was used in additional to some goods/services being specified. OHIM has now confirmed that rectification is available in both cases, which is good news for CTM owners.
Taking the class 25 heading of ‘clothing, footwear and headgear’ as an example, the Annex to OHIM’s Communication clarifies that the following goods, amongst others, would not fall within a literal interpretation of this class heading:
“Boot uppers; cap peaks; dress shields; fittings of metal for footwear; footwear uppers; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; inner soles; non-slipping devices for footwear; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots; tips for footwear; welts for footwear”.
CTM owners with a class heading registration in class 25 providing any of these goods under their mark would need to rectify their registration to specifically provide that the mark covers these goods. Failure to do so would make it difficult to prevent a competitor from providing these goods under the same or a similar mark.
How is this done?
A CTM owner, or their representative, must send an online declaration to OHIM clearly and precisely specifying the goods and services they want the mark to cover from the alphabetical list of the relevant class. OHIM will examine the declaration and if it meets OHIM’s requirements, as set out in its Communication, OHIM will amend the CTM register and inform the CTM proprietor that this has been done. There is no official fee for making a declaration.
However, there is a time-limited window for making a declaration of between 23 March and 24 September 2016.
At present there is some uncertainty around the rectification process. It remains unclear exactly which additions to the goods/services will be acceptable to OHIM and which will not. OHIM has said that it will object to attempts to add goods/services that are “clearly covered” by a literal interpretation of the class heading. How OHIM will interpret and apply this requirement remains to to be seen.
CTM owners should review their CTM portfolio with a view to identifying CTMs applied for before 22 June 2012 with a class heading. They should then consider specifying, or refining, the goods/services covered by each mark to reflect the nature of their business today. Given the time limit of September 2016, they should begin that process without delay.
Determining whether and how the specification of goods/services should be amended can be a tricky business. It is important to get it right as the specification defines the all-important scope of the protection provided by a mark.