Protection and defense of trademarks in the E.U.

Published onJune 2013

Further to the decision of the Court of Justice of the European Union IP TRANSLATOR (see our previous article), all 25 national trademark offices of E.U. Member States together with OHIM have increased the discussions to try to harmonize their interpretation relating to protection and defense of trademarks filed or registered in connection with the Nice class headings.

The offices are working to find a common interpretation (i) of the requirements of clarity and precision regarding the designation of products and services covered by the trademark applications and (ii) in determining which general indications in the Nice class headings would be acceptable for trademark registration.

Nearly one year after the IP TRANSLATOR decision, the offices publish a common communication, presenting a compilation of data showing office by office the current scope of protection of national and Community trademarks containing all general indications of one or more classes, filed before and after the judgment.

Far from making the situation clearer, these multiple tables show the disparity of protections from one country to another.

If one day the offices reach an agreement and converge towards a common practice, time will eventually help standardize the scope of trademark protection, since the obligation of use within 5 years from the registration and the correlative risk of cancellation for non use should limit the scope of trademark protection in administrative or judicial litigations.

In the meantime, E.U. main objectives that registered trademarks enjoy equal protection under various legal systems of all Member States are far from being ensured.

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