On 23 March 2016 the updated Community Trade Mark (CTM) Regulation will come in to force. There are a number of changes in the new Regulation and they could lead to a reduction in the scope of protection of your CTMs. It is important to ensure that your CTMs have been analysed to ensure that you will not suffer a loss of rights and to consider filing new applications to plug any gaps in protection that have been identified.
Following the IP Translator case in June 2012, where a Nice Agreement class heading is used the trade mark is interpreted by OHIM to cover the exact goods/services listed or anything that could be reasonably interpreted as falling under the wording. The Nice Agreement is an international classification of goods and services applied for the registration of marks (“NCL”). It has changed over time as companies’ products and services have evolved and the tenth edition was published in 2011. Before IP Translator class headings were deemed to cover all the goods and services in a class, even if they were not specifically named in the specification.
A transitional period is being introduced meaning that the owners of CTMs filed before 22 June 2012 which include a class heading will have a six month “sunset period” from the entry in to force of the new Regulation on 23 March 2016 (i.e. until 24 September 2016) to declare whether they intended to seek protection for more than the literal interpretation of the heading. The declaration must indicate clearly and precisely the goods/services from the NCL alphabetical list in force at the time of filing and for which protection was intended.
Is there any risk in not including a declaration?
If such a declaration is not made then the CTM will be deemed to protect only the literal meaning of the class heading. This could have serious implications. For example the class 30 heading of the eighth edition of the NCL (from 2001) covers “rice” but would not cover noodles. Similarly the current class 15 heading is for “musical instruments” but music stands would not be included. There are numerous examples across the various classes.
Some sectors or trade mark owners are more likely to be affected than others. Particular care should be taken by those companies that have seen changes in technology over time and/or those who have expanded their product offering without reviewing the scope of protection provided by their registered marks. Where a new technology or product emerges that didn’t exist at the time the trade mark was filed, it may be interpreted as not being included in the class heading.
How will it work?
It has not yet been confirmed how an amendment to the goods/services will be reflected on the register. Those goods/services identified by the CTM owner may be added to the specification with the class heading retained, or the class heading may be replaced entirely with selected goods/services. OHIM will issue further details in due course.
How will an amendment affect third party trade marks?
Where a CTM owner amends a specification on the register, it will not be possible for that owner to prevent a third party from continuing to use his trade mark for goods/services where:
(a) that use was prior to the amendment of the specification; and
(b) use did not infringe the CTM based on the literal meaning of the goods/services in the register prior to the amendment.
Similarly the CTM owner is limited in terms of opposing or seeking to invalidate a third party trade mark.
It may be possible to avoid the consequences outlined above by amending the specification before the new Regulation comes in to force on 23 March 2016 but, unless there are exceptional circumstances, we anticipate that making amendments before that date will not be necessary.
As a first step our recommendation is for CTM owners to analyse the specifications of their trade marks in conjunction with their trade mark attorneys as soon as possible so that a decision can be made whether any specifications need to be amended and any new applications filed.