At some as-yet unspecified time in 2016 there will be changes to the Community Trade Mark (CTM) Regulation that could reduce 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.
Currently those CTMs that include a Nice Agreement class heading are held to include all of the goods/services in the alphabetical list of that class that was in force at the time of filing. 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 came in to force on 1 January 2015.
The owners of CTMs filed before 22 June 2012 that include a class heading will have a six month “sunset period” from the entry in to force of the new Regulation. During the sunset period it will be possible to issue a statement to the Community Trade Mark Office (“OHIM”) confirming the goods/services from the NCL alphabetical list for which protection was intended at the time of filing.
Is there any risk in not including a statement?
If such a statement 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 ready-made noodle meals. 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 is not yet clear how an amendment to the goods/services will be reflected on the register. Those identified by the CTM owner may be added to the specification or there may be an indication that the owner of the CTM has requested that the scope of protection provided by the class heading should include additional 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.
The new Regulation will come in to force in 2016 although a precise date has not yet been announced. It may be possible to avoid the consequences outlined above by amending the specification before the new Regulation comes in to force. However, 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 so that a decision can be made whether any specifications need to be amended and any new applications filed.