Scope of protection of EU trademarks

Published onFebruary 2016

Since you read all our news with great assiduity and interest (at least we hope) you know by now that the European Trade Mark system is undergoing a major revision (1). The new Regulation on European Union trademarks (or EU trademarks replacing Community trademarks) will enter into force next 23 March (2).

Most of you have certainly focused their attention to the new fee structure for trademark applications for registration or renewal and we are not here to blame anyone. However let’s not forget what trademark law is about. It is about the protection granted to registration.

On this very subject Article 28 paragraph 8 of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (3) must not be overlooked by trademark practitioners and trademark owners.

This provision is a direct consequence of the IP TRANSLATOR case (Court of Justice of the European Union, Case C‑307/10, 19 June 2012) and of the rule according to which designated goods and services must be interpreted literally (4).

Since 22 June 2012, OHIM (future EUIPO) had already changed its practice and stopped considering that the designation of class headings of the Nice Classification was equivalent to the designation of all the goods and services contained in such classes.

Now the new Regulation provides that “Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.

This means that owners of Community trademarks applied for or registered in connection with one or several class headings will have to precisely detail what goods and services they really want their marks to be protected for.

A six-month window has been set up to comply with this declaration, from 24 March 2016 to 24 September 2016.

After 24 September 2016, the lists of goods and services of EU trademarks filed on or before 22 June 2012 will be interpreted literally.

That is why you should ask yourself what goods and services your Community trademarks really cover and what they are really protected for.

INSCRIPTA had already warned trademark owners about the consequences of the IP TRANSLATOR case (5) and encouraged them to take precautions. It is not too late… yet.

© INSCRIPTA