What Businesses Need To Know About EU Trademark Reforms
Apr. 27, 2016 (Mimesis Law) — Reform is the name of the game in Europe at the moment, the copyright reform, the Brexit referendum, and now to add to the mix, the Trade Mark Directive and Regulation reform. Although this is a long time coming, with talks starting back in 2008, the Regulation only came into force on 23 March 2016 and trade mark owners may be left behind if unprepared for the upcoming changes.
The Regulation includes changes like renaming the Community Trade Mark to become the European Union Trade Mark (EUTM) and renaming the Office for Harmonization in the Internal Market (OHIM) to the European Union Intellectual Property Office (EUIPO). Also, the Regulation does away with the graphic representation requirement, opting rather that a trade mark be “represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
But, what I would like to focus on are the reforms relating to the trade mark classifications and the risks that businesses may face if they don’t act quickly. To give it some context, EUTMs are registered according to 45 different classifications of goods and services, described by a class heading, which gives basic, descriptive information about the goods or services covered by the trade mark. For example, Class 12 covers ‘vehicles; apparatus for locomotion by land, air or water’ and Class 15 covers ‘musical instruments’. The issue came about with the EUIPO’s practice of accepting a trade mark as covering everything within a classification’s class heading, affording trade marks a very wide scope of protection.
Then came the IP Translator judgment (C-307/10) on 22 June 2012, which dismissed OHIM’s catch-all approach, in favor of a literal interpretation of class headings, thereby narrowing a trade mark’s scope of protection to the literal wording of the class heading. For instance, a leather handbag manufacturer would previously have used the general wording of the class heading for Class 18 to cover its goods, however on a literal interpretation the class heading does not expressly mention ‘handbags’, which in light of IP Translator would mean the trade mark does not cover hand bags.
Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.
The trade mark reforms codify the IP Translator decision, meaning the general class heading description of the goods and services covered by trade marks registered prior to the decision will now be interpreted literally, thereby potentially narrowing their scope of protection. Trade marks that were registered pre-IP Translator and used only the general class heading to describe their protected goods or services have six months from when the Regulation came into force (23 March 2016) to file a declaration and amend their trade mark entries to ensure that the goods and services that the trade mark intended to protect are identified with sufficient clarity and precision. Of course not all, pre-IP Translator trade marks are affected, however, our friend the hand bag manufacturer would have to get his paperwork in order pretty quickly.