Holders of a EU registered trade mark filed before 22 June 2012 may have to take action in light of new regulation which could affect their rights.
Trade mark classes
Trade marks are registered in relation to specified goods and services, with reference to 45 classes of goods and services.
Each of these classes has a general heading, describing the type of goods and services falling within that class.
Previously, when a full class heading was utilised with respect to an EU (Community) registered trade mark, the registration was deemed to cover all goods or services in that class.
Changes to the law and filing declarations
A decision of the European Court of Justice in 2012 stated that class heading terms should be interpreted literally, that is, to cover only the specific goods or services described.
This decision was encapsulated in relevant legislation in a regulation which came into force a few weeks ago.
However, to ensure existing rights holders were not unfairly prejudiced, the legislation also provided an opportunity for existing proprietors (of EU registered trade marks filed prior to 22 June 2012) to file a declaration stating that the general heading utilised was intended to cover goods or services beyond its literal meaning. Such declarations have to be filed by 23 September 2016.
Get in touch
Those holding EU registered trade marks filed prior to 22 June 2012 are recommended to take advice, to ensure their portfolio coverage is adequate.