Specifications of goods and services in EU trademarks

How the EU trademark law reform affects these

We have previously provided an overview of the Trademark Law Reform in the EU affecting Community and national trademarks (here). This is a follow-up to inform in more detail about the expected impact on the specification of goods and services in trademark applications and registrations.

Up until June 2012, OHIM’s practice, confirmed by Presidential Communication 4/03 (here), was to consider that full class headings in any given class were to be read as covering “all goods / services” in that class. The Court of Justice, in its 19 June 2012 judgment called IP TRANSLATOR (here), said that specifications had to be clear and precise, and that only goods or services covered by the literal meaning of the terms used were covered by trademark registrations. OHIM reacted by issuing Communication 2/12, which entered into force on 21 June 2012 (here) and repealed the earlier Presidential Communication. The legislation contains rules regarding the specification of goods and services for new filings both on an EU-wide and on a national level. In addition, the Regulation provides for the possibility to amend Community trademarks that were filed before 22 June 2012 indicating full class headings based on the former practice.

As the legislation provides for some important restrictions to the possibility to amend old CTMs, CTM owners are recommended to take action now, before entry into force of the new legislation on 23 March 2016. Portfolio audits should be undertaken to determine the possible advantages of making appropriate amendments before this date.

1.    Existing CTM registrations covering class headings

·         Up until Communication 2/12 CTM applicants had reason to trust that indicating class headings would suffice to obtain the broadest possible protection. The legislation takes this into account and provides that CTM registrations filed before 22 June 2012 that cover full class headings in any given class can be amended to include goods or services that do not fall within the literal meaning of the class headings, provided they are in the Alphabetical List of the edition of the Nice Classification in force at the time of the application for the CTM.

®        Between 1996 and 2012, there were five different editions – from the 6th to the 10th edition. For historic Nice editions click here.

·         The time window for the amendment of the registration is 23 March 2016 to 24 September 2016.

·         The amendment is only possible where the CTM covers the entire class heading in any given class. Where applicants chose not to include certain general indications from the class, the legislation does not allow an amendment. This is unfortunate because the classification of goods and services normally follows their connection with categories designated by specific terms among the general indications and is not caused by other general indications in the same class.

®        For example, protective clothing technically is not a „life-saving apparatus“, but belongs to class 9 due to that term. Laptop cases belong to class 9 because of their connection with „data processing equipment“. If an applicant chose not to include „cash registers“ or „nautical apparatus and instruments“ in class 9 for being too far removed from their field of business, the addition of „protective clothing“ or „laptop cases“ is not possible under the new legislation.

·       The amendment is only possible to the extent that it concerns terms that are not covered by the general indications in the class headings. The Office will examine any declarations under Article 28(8) EUTMR and object to the inclusion of terms that it considers covered by the class headings. Depending on the Office’s reading of the class headings, this may mean that clarifications sought by a trademark proprietor are considered inadmissible due to differences in interpretation.

®        For example, diagnostic preparations arguably are not pharmaceutical preparations as these are only remedies or “drugs”. However, the Office seems to consider that they are covered by the general indication “pharmaceutical preparations”.

·     The amendment will be without prejudice to the provisions relating to the use requirement. This must be read as meaning that the addition of a term not covered by the literal meaning of the existing specification will not set off a new grace period for putting the mark to use. It does not mean that the mark can be revoked on the grounds of non-use because, before the amendment, it was not used for any of the goods or services of the registration.

®         Assuming that a CTM from 2010 (9th edition of Nice) covers the entire class heading of class 9 but has been used only for software (which was included in the class headings in the 10th edition), it could be argued that it was not used for any of the goods of the registration. However, the legislation, by allowing the amendment, does recognise that it was indeed meant to cover also „software“.

·     Finally, owners of junior marks that relied on the literal meaning of the specification of an existing older CTM should not suffer detriment on account of an amendment. Therefore, if a junior mark only infringes the CTM in respect of amended terms, but did not infringe it as originally registered, the owner of the CTM cannot prevent its use or attack its registration relying on the amended specification.

With a view to these restrictions, and in particular the fact that amendments can only be made where a CTM covers the entire class heading in any given class, CTM owners are advised to perform portfolio audits to determine whether their CTMs cover the goods and services of interest. It may be possible to fill perceived gaps by restricting specific general indications even where the CTM does not cover the entire class heading in any given class before the new legislation enters into force on 23 March 2016. With a view to that timing, portfolio audits are recommended before 23 March 2016 in order to allow time for taking appropriate action.

2.    New trademark filings in the EU (EUTMs and national marks)

 ·         General indications of the Nice Classification can be used provided they are clear and precise.

®     OHIM and the national offices in the EU have agreed on 11 terms that do not comply with this requirement, mostly “goods made of these materials”, as well as „repair services“ (for the full list click here). This agreement is, however, not binding on courts or even PTO appeal boards, and additional terms may be found too vague in the future.

Trademark offices have to examine specifications. If the terms indicated are too vague they have to object and, in the absence of appropriate amendments, reject those terms.

·         General indications cover goods or services that fall within their literal meaning. Applicants must check whether the general indications cover what they need.

®      The majority of goods or services are covered by the class headings. By way of example, items of clothing are covered by „clothing” in class 25 and there is no need to specify t-shirts, pants, socks etc. However, some products would fall off the grid. For example, laptop cases or protective clothing belong in class 9 but are not covered by any of the general indications in that class. Such items should be specifically added if there is an interest in them.

·         Apart from this, proper classification becomes compulsory for multi-class filings, and the law clarifies that classification has no impact on the similarity of goods or services.

3.    When will the new law enter into force?

The changes relating to specifications of goods and services in CTMs (in future: EUTMs) will enter into force on 23 March 2016.

The new EU Trademark Directive enters into force on 12 January 2016, but then has to be transposed into national law. The member states have three years for doing so, i.e. untilJanuary 2019.