Trade Marks: EUTM Specification checker

A Norton Rose Fulbright service

Publication March 2016

The headline

Owners of EUTMs (formerly known as CTMs)1 have until 23 September 2016 to revisit and ‘perfect’ their EUTMs.

Applies to EUTMs (including IRs2 designating the EU):

• Filed before 22 June 2012

• Registered in respect of the entire class heading of at least one Nice class3.

Background

The change follows the CJEU’s decision in the IP Translator4 case.

The use of a class heading no longer covers all the underlying goods or services falling within the class lists but will have the effect of limiting protection to goods or services falling within the literal interpretation of the class heading. In some circumstances, the class heading will remain perfectly adequate but in other cases, brand owners risk having the scope of their once assumed protection, seriously curtailed.

Action required: Article 28(8) declaration

Qualifying EUTMs need to be reviewed to check that the actual goods or services intended to be covered when the applications were filed are implicitly covered within the literal meaning of the class heading. If not, then an Article 28(8) declaration (there are no official fees involved) can be filed to add specific goods and services to the relevant class or classes, provided those goods and services were included within the edition of Nice Classification in force at the time of filing.

Deadline for filing: 23 September 2016.

Example

The class heading of Class 9 did not, prior to 2012, include computer software. By filing a declaration, computer software can be added.

Risk

Doing nothing risks the scope of EUTMs being irreversibly limited. Any limitation will also affect an owner’s ability to enforce its rights.

When is an Article 50 (partial surrender) appropriate?

Such declarations may be made at any time and enable EUTM owners the ability to more carefully define the broader wording (or, ‘general indications’) used in a class specification. Article 28(8) declarations are available to owners where the entire Nice class heading was used at the time of filing, enabling them to add goods and services. Where the entire class heading was not used, an Article 50 partial surrender can be used instead to qualify goods and services by rewording in more ‘clear and precise’ terms. We can advise regarding when this option might be advantageous.

Specification checker

We will:

  1. Carry out a scoping exercise to check the number of EUTMs requiring review.
  2. Provide you with fixed prices for:
    • conducting a detailed review, and evaluating your existing EUTMs to check their adequacy; and
    • providing you with recommendations around qualifying your EUTMs to ensure that they are ‘fit for purpose’ in light of your business requirements.
  3. Provide you with a before and after ‘health check’ regarding the scope of your EUTM protection.

Benefits

This is a one-off opportunity to revisit older EUTMs and enhance and bolster the scope of protection.

An Article 28(8) declaration will enhance protection for your brands; protection that is clear and precise as to what is covered and also more readily enforceable. The risk of diminishing the scope of protection and the integrity of your brand will also be prevented.

Fees

Our costs will depend on the number of registrations to be reviewed and also the number of specifications requiring attention and action. As mentioned above, we will provide you with fixed fees once we have carried out a scoping exercise.

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