Changes to the European Trademark system

Classification reform – Article 28 (8)

As we mentioned in our blog on 18 January 2016, a new regulation on the European Trademark (EUTMR) will enter into force on 23 March 2016. One of the changes concerns the scope of protection of a trademark registered in the European Union (“EU Trademarks”).

The new regulation reflects the changes in practice that followed the ruling of the EU Court in Case C-307/10 “IP Translator”. Thus, EUTM registrations with goods and services specification consisting of class headings will no longer be considered protecting the trademark for all goods and services that belonged to the alphabetical list of the relevant classes. Instead, the scope of protection will be restricted to cover the literal meaning of the goods and services in the relevant class headings (“What you see is what you get”). For instance, the heading of class 25 comprises “clothing, footwear, headgear” and protects inter alia “football shoes” but not “studs for football boots”.

According to the new regulation, the owners of EU Trademark registrations which were applied before 22 June 2012 and cove­ring a class heading will have the possibility to amend the specification of the goods and services to also include goods/services that belonged to the alphabetical list of the relevant class, at the time of the filing of the application. For this purpose, a declaration must be filed with the trademark registry between 23 March 2016 and 24 September 2016. Each term of goods and services indicated in the declaration must be clear and precise in order to be accepted.

If an EU Trademark registration covers the class heading and no declaration is submitted to the registry within the six month period, the registration will simply cover what can be naturally understood by each term of the class heading.

We strongly recommend the owners of trademark registrations to go through their portfolio of EU Trademark registrations filed before 22 June 2012, to ensure that they cover goods/services they actually need protection for.  We would be happy to assist with a strategy for amending and obtaining the best protection.

Please do not hesitate to contact Awapatent for more details or with any questions.

Sara Winther, European Trademark Attorney

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