Contact: Nicola Rochon & Ben Evans; Blake Morgan (Southampton, England)
A change will be implemented in relation to the EUIPO's interpretation of descriptions of goods and services. These changes could have a significant effect on owners of CTMs filed prior to 22 June 2012 and the protection their CTM provides.
Prior to June 2012, applications for CTMs could be made using class headings. These class headings were treated as covering all goods and services in the alphabetical list for those classes.
After 23 March 2016, all goods and services will need to be defined with "sufficient clarity and precision". Therefore, if a trade mark has been registered using class headings, protection will only be provided in relation to the goods and services that fall under the literal meaning of that heading. This could result in a significant narrowing of the registration and the protection it provides.
Owners of CTMs filed before 22 June 2012 should review the descriptions of the goods or services their mark is registered for and ensure the literal meaning of that description covers the goods or services it was intended to cover.
If on review of your trade mark registration the literal interpretation of the goods and services do not provide the protection you require, then remedial action can be taken to amend the specification.
The EUIPO are offering a one off opportunity to owners of CTMs filed before 22 June 2012 to clarify the scope of their specification and ensure it provides the required protection. To amend the specification owners of CTMs must make an Article 28(8) declaration before 23 September 2016. The declaration confirms that at the date of filing you were seeking protection in relation to goods and services that are now not covered by the literal meaning of the class heading, and informs the EUIPO of the additional goods and services you wish to be covered. However, please note the Office will only allow additional goods or services to be added to the specification if they were listed in the alphabetical list for that class at the time of filing.
Owners of CTMs filed before 22 June 2012 have until 23 September 2016 to file a declaration. If a declaration is not filed with the Office prior to this date then your mark will automatically be limited to the goods and services covered by the literal interpretation of the class heading, and as a result may not provide the protection you require.
If you have any questions in relation to the protection provided by your CTM registration or you wish to amend your CTM specification then please contact a member of the Trade Mark team at Ben.Evans@blakemorgan.co.uk
Ben Evans is a dual-qualified solicitor and trade mark attorney and advises clients on both contentious and non contentious intellectual property matters.
