One of the most significant aspects of the reforms relates to the way that the specifications of goods and services covered by EUTMs (previously CTMs) will be interpreted in the future. All EUTM owners affected by these reforms must take action before 24 September 2016 in order to ensure that their trade mark specifications provide them with the scope of protection intended.
Previously accepted EU practice was that trade mark specifications which included any Nice Classification headings should be interpreted as including all of the goods and services covered within that particular class. This interpretation provided applicants with a much broader scope of protection of goods and services without requiring them to individually list every possible item within the relevant class.
However, under the new practice, any specifications that include class headings are now deemed to cover the literal meanings of the terms used, and nothing more. This approach has now been formally endorsed by the new EU Regulation 2015/2424 (Article 28), which comes into force on 23 March 2016. As a result, the owners of any existing EUTMs which have class heading coverage and a filing date prior to 22 June 2012 will be given a 6 month grace period to file a declaration indicating that their intention at the time of filing was to obtain protection beyond the literal meaning of the class heading(s) used in the original application form.
The declarations must be filed before 24 September 2016, and must indicate, in a clear and precise manner, all of the goods and services within that class for which the applicant did intend to secure protection (beyond those clearly covered by the literal meaning).
If EUTM owners elect not to file a declaration to broaden out the intended scope of the specification before the expiry of this grace period, then the EUTM registration will be deemed to cover only the exact goods or services listed within the class heading. This means that in any future disputes concerning the scope of coverage of the mark, the specification of goods and services will be interpreted according to their literal meanings only.
Our advice is that the owners of affected EUTMs should take advantage of this grace period to conduct a thorough review of their EUTM portfolios to confirm if the scope of coverage afforded by the literal wording encompassed within the specification in each class is adequate to include all of the goods and services necessary for their commercial interests.
If you are concerned that the scope of your specification is no longer broad enough as a result of these reforms, please do not hesitate to get in touch with us for specific advice as soon as possible.