20 May 2016

Why class is NOT permanent for European Union Trade Marks

We previewed changes to the European Union trade mark regime earlier this year in a previous post.  

Since 23 March 2016 Community Trade Marks have been known as European Union Trade Marks, or EU Trade Marks for short. On the same date, changes to the classification of goods and services protected by EU Trade Marks were also enshrined in law.

The trade mark classification system uses a total of 45 classes to identify goods and services (the so-called "Nice Classification"). Each class includes a heading, identifying in summary the type of goods or services contained in that class, and a much longer list of specific goods and services.

For example, the heading of Class 1 is "Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry."  

Class 1 itself, however, consists of hundreds of chemicals, identified by name or application. 

Prior to June 2012 if the class heading alone had been designated when making a trade mark application, then the protection of the trade mark was taken to have extended across the whole range of individual goods or services in the class itself.

This changed with the decision of the Court of Justice of the European Union in the IP Translator case, from which point on it became the practice of European trade mark offices to interpret class headings literally. So if goods or services were not included in a class heading, even though they might be included in the class itself, they would not be protected by the trade mark registration.

Trade marks registered prior to June 2012 still had the benefit of the wide interpretation of the class headings. But this changed with the legislation that has now come into force, meaning that class headings will now be interpreted literally.

Luckily, there is a transitional period of 6 months (expiring 24 September 2016) in which trade mark owners can make a declaration that the classification was intended to include specific goods and services within the relevant class.

Trade mark owners should check their trade mark portfolios for EU Trade Marks registered before 22 June 2012 and whether such marks use class headings to designate the goods and services for which protection is sought. If class headings are used, then they should consider whether the literal meaning of the words gives adequate protection, and if not whether more specific goods and services need to be included by making a formal declaration to the EU Intellectual Property Office.

A checklist and link to an online form for making the relevant declaration can be found here

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