Australia: EU trade mark reform: clock ticking for owners to take action

What you need to know

• Several changes to the European trade mark system have been introduced this year, one of which may lead to the potential reduction in protection for EU trade marks filed before 22 June 2012 with specifications including so-called 'class headings'.
• The European Union Intellectual Property Office (EUIPO) has undertaken a comprehensive (albeit non-binding) review of class headings for trade marks, identifying goods and services that are not covered by the literal meaning of class headings.
• If you own an EU trade mark filed before 22 June 2012 that incorporates a class heading and are concerned that your protection may be limited as a result of the reform, you have until 24 September 2016 to clarify the scope of your desired protection.

As we reported in February this year, EU trade mark registrations filed before 22 June 2012 which incorporate a 'class heading' will soon have their protection limited to the literal meaning of that class heading, rather than capturing the broader monopoly that trade mark owners may have desired by incorporating the class heading in their specification. EU trade mark owners have until 24 September 2016 to take steps to clarify the scope of their protection. In the context of this reform, and against the background of the recent Brexit decision, now is the time for EU trade mark owners to revisit their registrations and carefully consider the scope of protection they wish to maintain.

What needs to be done?

An EU trade mark owner who wishes to clarify the scope of a registration filed before 22 June 2012 must file an Article 28 declaration. That declaration must list the goods and services that were intended to be protected by the registration, but are not covered by the literal meaning of the class heading. The declaration will need to be filed with the EUIPO by 24 September 2016.

To provide EU trade mark owners with a guide as to which goods or services will fall outside the literal meaning of class headings, the EUIPO has compiled a non-exhaustive list of examples.¹ For instance, while the class 2 heading of the Nice Classification refers to 'paints', 'thickeners of paint' are not covered by the literal meaning of 'paints'. This means that if continued protection for 'thickeners of paint' is desired, an Article 28 declaration would be required.

Key takeaway

Time is ticking. There are only two months left before the door will close on those wishing to clarify the scope of their monopoly afforded by trade marks filed before 22 June 2012. If no action is taken, owners of those marks run the risk of losing some of the protection they have previously enjoyed over certain goods and services. It is therefore critical for EU trade mark owners to act sooner rather than later and seek advice about whether they need to file an Article 28 declaration to maintain their desired protection, and if so, the precise shape that such a declaration should take.

Footnote

¹ This list is available at https://euipo.europa.eu/ohimportal/en/decisions-and-communications-of-the-executive-director

This article is intended to provide commentary and general information. It should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this article. Authors listed may not be admitted in all states and territories