As we have mentioned in a previous blogpost, the new EU trademark regulation enters into force on 23 March 2016. With the new regulation follows a new practice in regards to classification of goods and services. As this applies retroactively to already registered trademarks, owners of such marks are offered a 6-month grace period ending on 24 September 2016 to amend their registrations accordingly.
According to the new regulation, the registration of entire class headings will only cover goods or services that fall within the literal meaning of the class headings concerned. It means that a registered entire class heading will no longer cover all the goods or services that are enlisted within the particular class, or, as the case has been, the entire alphabetical list of that class.
This new “it means what it says” approach will not only apply to new registrations, but also to trademarks registered before 22 June 2012. The problem is that the common practice before June 2012 was to register entire class headings giving protection for all goods or services pertaining to that class. Therefore, most of the trademark portfolios will have to undergo revisions in order to comply with the new rule. The owners of old trademarks (registered before 22 June 2012) will have a 6-month grace period until 24 September 2016 that enables them to modify their registrations accordingly. Not acting under these circumstances is inadvisable, since passivity might lead to the loss of the trademark protection you thought that you had.
Let’s take an example; you are the owner of a Community trademark registered before 2012 for the entire class heading of class 15 “musical instruments”. Your company manufactures and sells cases for musical instruments such as violins, cellos, guitars and flutes. If you do not modify your registration within the grace period, and limit or specify that the registration also includes cases for musical instruments, you might lose protection in relation to such goods as it is obvious that cases for musical instruments like violins or cellos are not musical instruments. In addition, you could risk losing the trademark registration all together as it could be deemed that you have not made genuine use of your trademark. Similarly, if you are a translation agency with a trademark registration for the entire class heading of class 41: “education; providing of training; entertainment; sporting and cultural activities”, you might risk your trademark as this class heading could be considered no longer including “translation services”.
Therefore, in order not to risk losing trademark protection, it is of essence for trademark proprietors to scrutinize and carefully revise their entire trademark portfolios. Appropriate classifications can spare the trademark holders lengthy, costly and risky proceedings. The trademark experts at Synch are prepared to help you in order to adapt your brand to the challenges of the amended European trademark law and to optimize the protection of your trademark.
For further information, please contact David Leffler.