As can be seen from our recent bulletin regarding the EU Trade Mark reforms, changes are afoot in relation to European Union Trade Marks (EUTMs, formerly known as CTMs). One of these changes brings many trade mark owners the invaluable opportunity to review and enhance the wording of their specifications to ensure they have clear protection in place.
Previous practice dictated that EUTM applications covering the full class heading were deemed to cover all goods/services falling in that class under the Nice Classification. By way of example, an EUTM covering “musical instruments” in class 15 was also considered to cover cases for musical instruments, turning apparatus for sheet music and music stands. Following the decision issued by the Court of Justice of the EU in the IP TRANSLATOR case (see our bulletin here for further detail on this case), this practice changed on 22 June 2012. Any EUTM applications filed using a “class heading specification” from 22 June 2012 onwards are deemed to cover the literal meaning of the words of the class heading only. As such, an application for “musical instruments” will still cover musical instruments, but will no longer cover music stands etc.
The EU reforms seek to streamline the EUTM Register so that a literal meaning will be applied to the specifications covered by all EUTMs, no matter when they were filed. As a saving grace, the EUIPO (formerly OHIM) are offering the owners of EUTMs covering the full class heading and filed under the old practice (i.e. those filed before 22 June 2012) the opportunity to broaden the wording of their specification to ensure they still have protection for all of the goods/services they intended to cover. After 23 September 2016, all EUTMs will be deemed to cover the goods/services included in the literal meaning of the wording of their specification.
Under Article 28 of the new EU Regulation, owners of EUTMs covering the full class heading and filed before 22 June 2012 will be able to file a Declaration setting out the additional goods/services, not covered by the literal meaning of that class heading, that they intended to cover in their application. The EUIPO will shortly be issuing guidance on the goods/services not considered to fall under the literal meaning of each class heading. Obviously, these goods/services must have fallen under the relevant class at the time the EUTM was filed. The magic window for submitting the Declaration will be between 23 March 2016 and 23 September 2016.
In addition to the new Article 28 Declaration, there is also an existing mechanism that can be called in to play. EUTM owners are free to “surrender” any of the goods/services covered by their EUTM at any time. Where a class heading term is covered, for example, the owner is able to delete that term and replace it with a selection of the alphabetical list of goods and services in the Nice Classification which are deemed to fall under that term. This is known as an Article 50 partial surrender and is not affected by the new Regulations.
As anyone who has seen the full alphabetical list will tell you, it is incredibly extensive so careful attention should be paid to which terms are kept, to avoid a lengthy specification covering many goods and services not of interest.
Whilst some may see an advantage in an overly broad specification, once an EUTM is more than five years old, it is arguable that the risk of a third party applying to partially revoke your EUTM (to limit your rights down to the confines of those goods/services on which you actually use) is heightened.
This route will also limit you to the exact wording of the alphabetical list which you may not feel adequately describes the group of goods/services of interest to you. For example, an Article 50 partial surrender of the class heading term “apparatus for locomotion by land” in class 12 could result in coverage of “audible warning systems for bicycles, baskets adapted for bicycles, bicycle kickstands, bicycle chains, bicycle handlebars, bicycle tyres, bicycle brakes, bicycle mudguards, bicycle cranks, bicycle motors, bicycle pedals, bicycle wheels, bicycle saddles, bicycle frames, bicycle bells, direction indicators for bicycles…” (and the list goes on), whereas the EUTM owner may prefer to cover the simpler and, arguably, broader term “parts and fittings for bicycles” by filing an Article 28 Declaration.
It remains to be seen which mechanism will be the better option. We await further information from the EUIPO as to how Article 28 Declarations will be put into effect and we believe the best option for each trade mark portfolio will need to be assessed on a case by case basis. The good news is there are no official fees for either option.
We will be contacting those affected shortly and, as always, will be on hand to advise on the best way forward for each individual portfolio.