Check your EU trademark – change in law could wreck protection

Blogs March 1, 2016

IPR and Technology

In December 2015, the European Parliament adopted a new amending Regulation and a new Directive on trademarks. The amending Regulation, which comes into effect on 23 March 2016, includes a change in EU trademark (EUTM) classification practices. This change may substantially affect the protection offered by existing EUTMs (currently referred to as Community Trademarks or CTMs), which is why you should check whether your company’s EUTM registration information requires updating.

In the past, it was common to apply for trademark protection in Finland and the EU using only class headings ( see class headings on the TMclass website ). Class headings were previously interpreted as giving protection across the whole class (i.e., scope of protection of the mark covered all products or services in that class). However, over the last few years, the interpretation of class headings has changed and become more specific, meaning that the scope of protection only extends to goods and services covered by the literal meaning of the terms in the heading. This change in practices will be extended retroactively in connection with the present reforms to include old EUTMs.

The European Union Intellectual Property Office (EUIPO; currently referred to as OHIM) will abandon their current interpretation concerning older EUTMs filed before 22 June 2012, according to which class headings cover (a) goods or services covered by their literal meaning, and (b) all goods or services included in the alphabetical list of the relevant class. Owners of EUTMs have, however, been given a six-month transition period (23 March to 23 September 2016) in which to amend any lists of goods and services that were originally completed in accordance with the old classification practices. On 23 September 2016, any old EUTMs not amended will be considered to only protect goods or services covered by the literal meaning of the class heading.

Example: Let’s imagine that your company produces computer software and you filed an application for an EUTM (CTM) in 2011 using only class headings. At that time, the term ‘computer software’ was not included in the Class 9 class heading, and now in 2016 there is a risk that the EUTM registration will not be considered to give protection to the company’s primary product. However, by acting now and updating the previous registration in the way outlined below, it is possible to ensure that the term ‘computer software’ remains within the scope of the trademark’s protection.

To avoid loss in protection, carry out the following:

  • Check whether your company has EUTMs using the search functions on the EUIPO website: eSearch (search by trademark name) or eSearch owners (search by trademark owner).

  • Check if the list of goods and services in your EUTM registration (literally interpreted) sufficiently covers the goods and services offered by your company under this trademark.

  • If your company has EUTMs filed before 22 June 2012 whose description of goods and services includes a class heading, you should consider the following options:

  1. Restricting the list of goods and services by filing for partial surrender before the new reforms come into effect on 23 March 2016. You can replace general indications with more precise terms and add missing terms that further specify the class heading (terms have to be selected from the alphabetical list for the relevant class of the Nice Classification edition in force at the date of original filing).

  2. Clarifying the list of goods and services during the six-month transition period (by 23 September 2016 at the latest) in accordance with separate transition provisions. In some cases, it may be preferable, however, to amend the specification before the new legislation comes into effect in March 2016. This is because third parties will be given the following right of defence in connection with clarifications made during the transition period:

  • If a third party has, prior to your clarification, used a similar trademark without violating your company’s registration – when the list of goods and services in your unspecified registration are read literally – this third party can, even after your clarification, continue using the mark in connection with goods and services that you bring into the scope of protection of your mark with your clarification.

  1. Leaving the list of goods and services in its current form. This option is sensible in situations, where the goods and/or services protected under the particular trademark of the company are already specified in sufficient detail in the EUTM registration’s list of goods and services.

Any shortcomings in EUTMs filed after 22 June 2012 should of course also be evaluated, even though the changes in law mentioned above, along with its transition period provisions, do not apply to these newer registrations (for these the scope of protection already now only includes the goods and services covered by the literal meaning of the specification). Bringing new goods or service terms to EUTMs filed after 22 June 2012 normally requires submitting a new EUTM application to EUIPO. Bringing totally new classes into the protection of the trademark also requires making a new EUTM application, regardless of whether the original EUTM was filed before or after 22 June 2012.

The retroactive narrowing of the scope of protection for lists of goods and services under the forthcoming EU legislation applies only to EUTMs. Despite this, it may be useful also for owners of national registrations to review their older registrations based on class headings and, if necessary, clarify the list of goods and services of these.

The new EUTM legislation also brings changes to registration and renewal fees, as well as current practices, according to which the basic EUTM fee includes three classes of goods and/or services. In the future, the application fee will include only one class and an additional fee will be charged for each additional class.

If you require assistance in protecting your trademark or with interpreting and drafting lists of goods and services, we are happy to help.