The European trade mark practice has implemented the principles laid down in CJEU’s decision “IP Translator” (Case C-307/10). It is important to note that since that decision, the EUTM’s goods and service descriptions shall be interpreted literally by trademark examiners and IP Courts. Trademark owners should be careful to ensure that all goods and services in respect of which the mark is (or will be) used are included within the goods & services claimed, to ensure that the desired scope of protection is achieved. General class headings no longer guarantee protection for all goods or services included in the class. The new interpretation (implemented within the recent EU trademark reform) states that goods and services should be identified with sufficient clarity and precision so that the extent of the protection can readily be determined. Whilst the class headings of the Nice classification system may still be used they must comply with the required standard.
DEADLINE: 24 SEPTEMBER 2016
Owners of EUTMs filed before 22 June 2012 may, within six months of the entry into force of the EUTM (this is by next 24 September 2016), declare that their intention at the date of filing was to seek protection in respect of specific goods or services which, under the new interpretation, might not be understood as included under the general description originally filed. Once filed the declaration with the EUIPO, the Register will then be amended accordingly and the trademark scope of protection ensured to the owner of the mark. There are no taxes/official fees related to the filing of the declaration. Also, guidance of an EUIPO’s official representative is highly recommended.
CONCLUSION:
If you or your client i) owns one or more European Trademarks (requested directly with the OHIM/EUIPO or through a WIPO international application), ii) covering one or more class headings and iii) filed before 22 June 2012, the filing of a clarifying declaration by 24 September 2016 could be necessary in order to avoid loss of rights in the scope of protection of the trade mark.
Feel free to contact us and we at IP Wisely will be happy to advise further on the preparation of the required declaration.
Below you will find the EUIPO’s official communication including all details of the case:
/uploads/5/0/8/3/50831263/communication_on_classification0808216.pdf
Authors
Riccardo Ciullo
Judyta Kasperkiewicz
