As a result of the Amending EU trade mark Regulation 2015/2424, which entered into force on 23 March this year, the protection of all EU trade marks will soon be determined following a literal approach of the registered goods and/or services, regardless of whether the registered goods and/or services correspond to a class heading, instead of the current practice which sets forth that earlier registered marks protected for a class heading are interpreted to cover the entire class. This means that some EU trade marks will soon have a more narrow protection than before. Consequently, holders of older registrations are given an opportunity to clarify their intention with their registration. The time period for filing declarations regarding the interpretation of older registrations ends within the next couple weeks so, if you hold EU trade mark(s) registered before 22 June 2012 for protection of the entire class heading of a Nice class, now is the time to consider whether you intended that the trade mark be protected beyond the literal meaning of the class heading or not.
The Amending Regulation 2015/2424 codifies the so-called IP Translator Case in the sense that all EU trade marks will be determined following a literal approach of the registered classes, regardless of when they were registered.
Before the IP Translator judgment in 2012, EUIPO interpreted all applications designating the entire class heading of a Nice class, as a claim for protection for all goods and/or services falling within the relevant class. Following the IP Translator judgment, applications for registration of EU trade marks filed after 21 June 2012 and referring to a particular class heading of the Nice Classification were interpreted by EUIPO following a literal approach.
The risk of unintended losses for holders of older marks is reduced by the ongoing transitional period, which provides a chance for such holders to clarify their original intention with claiming protection for an entire class heading. A clarification of this kind must be filed by 24 September, and will, as a main rule, entail that the registration be amended accordingly.
In sum, it is advisable that companies holding EU trade marks review them and consider whether:
- the trade marks (or any of them) were filed for registration before 22 June 2012;
- the trade marks (or any of them) are registered for at least one entire class heading of the Nice classification; and
- the company’s intention for those trade marks was that goods and services (within the same class) which go beyond the literal meaning of the class heading should be protected by the registration.
If 1 to 3 are at hand, you must file a declaration to EUIPO by 24 September 2016 in order to obtain protection beyond the literal meaning of the class heading.
Want to know more? Please contact Fredrik Ståhl, partner at Time Advokatbyrå, +46 701 49 25 69, email@example.com or Emilia Hempel, lawyer at Time Advokatbyrå, + 46 701 41 55 09, firstname.lastname@example.org. Time Advokatbyrå regularly advices on trade mark law related matters such as trade mark strategies, oppositions, licensing agreements, infringements and counterfeiting.