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20th January 2016

Important trade mark news


20th January 2016

Important trade mark news

Important changes are coming which will affect the way that Community Trade Marks filed before June 2012 will be regarded. If you have a portfolio of CTMs – or even just one – filed before 22 June 2012 and have never heard of an Article 28 declaration, you should read this.

In 2012, a case commonly known as IP Translator led to a change in the way OHIM interprets the scope of classifications using only the ‘class headings’ of the Nice Classification system. In common parlance, it changed the way we file for trade marks – so rather than simply apply for, e.g. ‘Class 16 printed goods’ and obtaining protection in respect of all goods in class 16, we now have to apply only in respect of the printed goods for which the applicant would like protection, e.g. ‘newspapers, journals, books’ or ‘diaries, pencils and notebooks’.

So IP Translator changed the trade mark landscape going forward and we stopped using class headings and became more focused on genuine use. But no changes were made retrospectively and marks already applied for or registered prior to June 2012 were simply left alone, complete with their broad class heading monopolies.

What is happening?

However, the landscape is about to change still further as a result of changes brought in by Article 28 of the new EU Trade Mark Regulation (EUTMR). Instead, it will confine CTMs that contain class headings to the literal meaning of the words in the class heading. If a product or service is not included in the literal meaning of those words (in the opinion of the OHIM), the CTM will not cover that product or service. For example, using our class 16 classification heading ‘printed goods’ – if the owner of a mark registered prior to 2012 is registered in respect of ‘printed goods’ in class 16 and wishes to enforce the registration against a pencil selling infringer of the mark, protection will no longer be afforded to cover the whole of class 16, it will simply cover the literal meaning of ‘printed goods’.

Why should anyone care?

Although the ins and outs of trade mark specifications might be seen by some to be a dull, technical aspect of a trade mark portfolio, they are fundamental to the scope of protection a registered trade mark actually gives and are precisely the reason why you pay our professional fees to draft the scope of protection accurately.

This change in the law and practice is significant and is going to alter the scope of protection of marks registered prior to 2012 (and let’s face it, there are many), in some cases, the scope will be radically reduced.

What can we do?

In order to recognise the magnitude of this oncoming change, trade mark owners will soon be given a six-month, one-off window to bolster the scope of their pre-June 2012 CTM portfolios by making an “Article 28” declaration to the EU Intellectual Property Office (as OHIM will soon be known) regarding the goods and services covered by their registrations. If they do not, those registrations may forever thereafter be limited and may possibly no longer cover goods and services which owners previously thought they did.

Option 1: The Article 28 declaration

The OHIM is proposing to open a one-off, time-limited window between 23 March and 23 September of this year in which CTM owners can file a declaration setting out additional goods and services not covered by the literal meaning of class headings used in their registrations. This will only be available for CTMs which specify the class heading which was in place at the time the CTM was filed (i.e., between 1 April 1996 and 21 June 2012). Those additional goods and services will then be added to the specifications of those registrations and bolster the future protection provided by them. If no declaration is filed, the effect will be that all relevant marks will be automatically limited to cover only the literal meaning of the words in the class heading.

Option 2: The Article 50 part-surrender

It is always open to CTM owners to surrender part of their trade mark by deleting particular goods and services from a specification. This power can be utilised where the specification covers an entire class heading to delete that heading and replace it with the full alphabetical list of goods and services listed in the relevant Nice Classification for that class, less one type of good or service as otherwise nothing has been surrendered – you are bound to find something that would not be too damaging to delete – perhaps lanyards in class 26 which seemed to be a favourite in applications of that time, I recall.

So which one is the best option?

Both methods achieve, in different ways, a similar outcome – the aim of which is to ensure that CTMs remain registered for as broad a scope of goods and services as possible, and are not negatively affected by the change in the law. There are still big questions to be answered and until the OHIM does that, no decision should or needs to be taken.

Points to take away with you:

  1. Neither approach requires payment of an official fee although there will be professional fees in either drafting the declaration or the Article 50 paperwork and the revised specification.
  2. Additional goods and services added by an Article 28 declaration will be subject to certain defences if CTM owners try to assert their marks against third parties who have made prior uses, i.e., if your declaration broadens your monopoly you cannot assert it against a use which predates the declaration. See Article 28(9) of the new EUTMR.
  3. Article 28 declarations involve retaining the class heading and adding additional goods and services, albeit we anticipate that the EUIPO will look to keep the possible additions to a narrow list. Partial surrenders involve deleting the class heading and replacing it with a (very) long list of goods and services.

We will be contacting every client for whom we filed a trade mark within this period in order to discuss whether they wish to file the Article 28 declaration or an Article 50 partial surrender, or even if they wish to take any action at all. If prior to our contact, you have concerns or wish to discuss this in more detail, please contact Laura Trapnell or Abigail Sinden in our Intellectual Property team.

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