A number of significant changes are afoot which will overhaul
several aspects of the European trade mark system in the coming
An important change is that the scope of protection afforded to
some trade marks filed before 22 June 2012 may be affected in a way
that trade mark owners may not anticipate.
Owners of European trade marks should keep a close eye on
developments, as they may need to act quickly to ensure they retain
the relevant scope of protection under their existing
Significant changes are afoot in Europe and owners of European
trade marks (also known as 'Community Trade Marks') filed
before 22 June 2012 would be well advised to keep track of
developments which have the potential to limit the scope of their
protection in the EU.
As most trade mark owners understand, a trade mark provides a
monopoly in relation to a particular sign for specific goods or
services. In the vast majority of jurisdictions, goods and services
are classified under the Nice Classification into 45 different
classes. Each class of goods or services has what is known as a
'class heading' which provides a general indication of the
types of goods and services within its ambit. While past European
practice allowed trade mark owners to obtain a broad scope of
protection by using a class heading, that practice is to become a
practice of the past.
What's happening in the EU?
The Office of Harmonisation in the Internal Market, which will
soon be re-branded the European Union Intellectual Property Office
(EUIPO), has indicated that as a result of changes enacted under
Article 28 of the new EU trade mark regulation (EUTMR), the
monopoly afforded to EU trade marks filed before 22 June 2012 that
contain class headings will be restricted to the literal meaning of
the words included in the class heading. This means that if goods
or services are not clearly included in the relevant class heading,
protection will not extend to these goods or services.
This practice has already been applied for EU trade marks filed
after 22 June 2012, following the 'IP Translator' case that
was heard at that time. Now, effective from 23 March 2016, the
EUTMR will extend this practice to trade marks filed before 22 June
There has been some confusion about exactly how this change will
be implemented in practice and what goods or services will or
won't be taken to fall within the literal meaning of a given
class heading. In light of this, we understand that the EUIPO will
issue a communication from the EUIPO President sometime this
The EUIPO will afford EU trade mark owners a six-month window
between 23 March 2016 and 23 September 2016 to clarify the scope of
protection claimed by their pre- 22 June 2012 EU trade marks. This
will be done by filing an 'Article 28 declaration'
indicating the goods and services that are intended to be
protected, but are not covered by the literal meaning of class
headings used in a registration. If no action is taken, it seems
that EU trade mark registrations which use class headings will have
their protection limited to the literal meaning of the goods or
services specifications, and not the broader monopoly in respect of
which trade mark owners thought they had obtained protection by
including a class heading.
EU trade mark owners should keep an eye out for the
communication that is soon to be issued by the EUIPO, and take the
time now to evaluate their existing pre-22 June 2012
Although the process and requirements of the Article 28
declaration have yet to be finalised, given that there will be only
a limited six-month window to amend the scope of EU trade mark
registrations to include goods or services not covered by the
literal meaning of class headings, owners of EU trade marks filed
before 22 June 2012 would be well advised to watch this space and
be ready to engage with their advisers to discuss the various
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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