Further to our briefing document in March, the changes to the
European Union Trade Mark system have now come into force. Among
the changes were new rules regarding the classification of goods
and services. As a result, it is now possible to make amendments to
EU TMs (European Union Trade Marks, formerly known as Community
Trade Marks or "CTM"s) filed before 22 June 2012, and
which covered the entire Class heading in a class of goods and/or
services, in order to ensure that all relevant goods and services
are covered by those Registrations.
What are the changes?
Whereas previously the Class headings could be used in an EU TM
Application to claim protection for all goods or services in that
Class, any EU TM registrations covering the Class headings will now
be deemed to extend only to the goods or services clearly covered
by the literal meaning of the terms listed in the Class
Accordingly, there could be goods or services beyond the literal
meaning of those terms, which fell into the respective Class at the
time of filing the Application, but which, after the rule changes,
will no longer be deemed to be covered by those existing European
Union Trade Mark ("EU TM") registrations which cover the
entire Class heading.
A ladies shoe designer, specialising
in high heel footwear, registered in 2001 her house brand as an EU
TM using the Class heading in Class 25 "clothing, footwear,
headgear". Part of her business includes providing spare
"heelpieces", sold separately from the shoes, to
shoemakers and shoe repair shops.
Under the old practice, the Class
headings in an EU TM Registration included protection for
heelpieces even though that term is not covered by the literal
meaning of the terms "clothing, footwear, headgear".
Under the new practice, a declaration
should be filed before 24 September 2016 so that her EU
Registration will continue to cover "heelpieces" for
Had she not specified the entire
Class heading in Class 25, this opportunity would not be
Trade mark owners have been given 6 months in which to file a
declaration indicating that their intention was to seek protection
for goods and services that were in the relevant Class at the time
of filing but are beyond the literal meaning of the items listed in
that Class in the Registration. If no such declaration is filed
within that period, EUTMs covering the Class headings will be
deemed to cover only the literal meaning of the goods or services
We have until 24 September 2016 to file any
declarations, but please do let us know as soon as possible whether
this is something you wish us to handle. We recommend that clients
review the specifications of their EU TM Registrations and let us
know if there are any additional goods or services which might not
be included within the literal meaning of the Class headings that
should be covered. We would then be pleased to advise you whether
those amendments would be permitted and assist in drafting and
filing an appropriate declaration with the European Intellectual
Your regular contact at Abel & Imray will be pleased to
advise you further concerning whether action may be required in
respect of any of your EU Trade Mark Registrations which currently
cover the Class headings in one or more Classes.
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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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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