Should your EU trademark be amended?
Trademarks are registered in classes, and a trademark is only protected in the classes for which it has been registered. Goods and services are categorized according to the Nice classification, which consists of 45 classes, and each class has a general description of the goods or services in the class – called the class heading.
The trademark office in EU (OHIM) have previously held that a trademark, classified under a class heading, also provided protection for the other goods in the class, and not just the specific goods mentioned in the class heading. A trademark registration for “vehicles” in class 12 thus also included car tires, even though tires were not specifically mentioned in the class heading.
In 2012, however, this practice was changed, as the IP TRANSLATOR case determined that protection provided by a trademark registered under a class heading is limited to the literal meaning of the class heading, and that no additional protection can be provided. If only the class heading is listed, without any further specifications of the goods or services, only the literal meaning of the heading is protected. In the example with vehicles in class 12, it would not be possible to also obtain protection for tires.
Since the IP TRANSLATOR verdict, all trademarks have been handled according to the new practice, and trademark registrations have been classified accordingly.
The problem is, however, that there exists a large amount of trademark registrations from before the IP TRANSLATOR case, which were not classified in accordance with the new practice for class headings. This has led to a lot of speculations about the scope of protection for these trademarks.
To get rid of the insecurity, OHIM has decided to give trademark owners the opportunity to amend their registration until September 2016, if the trademark is classified under a class heading and was filed before the IP TRANSLATOR case from 22 June 2012.
From March 2016, it will therefore be possible to file a declaration with amendments of the classification. The classification can be amended to include any terms in the alphabetical list for the particular class.
If no declaration is filed before the deadline, the protection of the trademark will be limited to the classification specifically mentioned in the class head, and it will not be possible to obtain protection for other goods or services within the same class.
For trademarks filed before 22 June 2012 it will not be possible to amend the classification, and the scope of the trademark will therefore – in accordance with the IP TRANSLATOR verdict – only cover the literal meaning of the class heading.
If you have a trademark from before the IP TRANSLATOR case, which is classified under a class heading, it is therefore very important that you file the declaration with OHIM, as to secure the proper protection of your trademark.
The declaration can be filed from 23 March 2016 until 23 September 2016.
If you wish to file a declaration for amendment of your EU trademark, or if you are unsure if the new rules will affect your trademark, you can contact Martin Hoffgaard Rasmussen (firstname.lastname@example.org) for further information.
By Mia Storm