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Since 23 March last, European trademark legislation has been amended on a number of counts. The Community Trademark Directive (mandatory EU-guidelines for the legislation of member states) as well as the Trademark Regulation (legislation regarding the EU-trademark) have been amended. As yet, the changes in the Trademark Directive need to be translated into the national legislation in due time and therefore do not yet cover the Benelux trademarks or other national trademarks.

Here, we pay attention to one of the amendments on the basis of the Trademark Directive and relevant to the proprietors of Community trademarks ¹ (effective 23 March European Union trademark, or also called “EU-trademark”). If you are the proprietor of an EU-trademark registered before 22 June 2012, this change may also require action on your part!

When applying for a trademark on the basis of the so-called Nice Classification, one has to be specific as to the goods (products) and services for which the trademark is being registered. The goods and services in the Nice Classification are divided into 45 classes, 34 for goods and 11 for services. Each class has a standard description or definition, the so-called “class title” or “class heading”, listing the specific products or services in that class. Often in the past, registrations were made for the entire class heading, assuming that the registration would comprise all of the goods and services of that particular class.

On 19 June 2012, the European Court, however, stipulated in the IP Translator” case that the definition of the goods and services should be sufficiently `clear and precise` to be able to make a decision on the level of protection of that trademark. Hence, registering for the class heading only was (in most cases) insufficient. In response, the European trademark authority (EUIPO, formerly OHIM) has changed its “class heading covers all” practice, so that the goods and services list has to be drawn up sufficiently clearly and precisely (which can be the class heading, but in other cases demands further clarification and precision). With the March 23 amendments, this practice has now been put into law.

In addition, the proprietors of an EU-trademark registered before 22 June 2012 have also been given the time until 24 September 2016 to submit to the EUIPO a declaration further clarifying the goods – and services definition of their EU-trademark. With this, EU-registrations dating before the IP-Translator verdict have been brought into line with current practice. We urgently advise EU-trademark proprietors to list their EU-trademarks carefully and to take action to prevent loss of rights.

 

1) Or an international registration specifying the EU