Important change for owners of Community Trademarks (EU) applied before 22 June 2012

With effect from 23 March 2016, the European Parliament and the Council passed the Regulation no. 2015/2424 (“the Regulation”) which introduces important changes in the existing rules and functioning of the Community Trademark with an impact particularly on proprietors of trademarks applied before 22 June 2012 and new applications filed after 23 March 2016 as well.

So what’s the matter? According to the current version of the so-called Nice Classification there are 45 classes of goods and services for the trademark classification, while the extent of each class is generally defined in the heading of each class. In addition, however, each class contains a list of specific goods or services from which the applicant may choose those for which he intends to register the trademark. It often happened that applicants did not state each particular goods and services in the trademark application, mainly due to time reasons (they did not want to search through a long list of hundreds of items) and indicated only the general definition contained in the class heading.

However, given that the literal meaning of the terms specified in the general heading of the class may not meet the individual goods and services which are included in this class, according to the new Regulation the applicant (if stating only general definition of the class heading in the trademark application) has to expressly state whether he claims protection for the whole class or only for goods and services included in the general definition of the class heading.

Owners of trademarks applied before 22 June 2012 may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading no later than on 24 September 2016.

In essence, this means that from the end of the transitional period, all trade marks containing class headings will be interpreted according to their literal meaning regardless of their filing date.

Please contact us if you are interested in finding out more about this issue. We would be pleased to offer you legal services in this area.

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