25 February 2016

Class Headings in the European Union: A Rare Opportunity for Amendment of the Scope of Protection of a Trade Mark Specification

A hot topic amongst Trade Mark Practitioners in the European Union over the last few years has been the question of how the Nice Classification affords protection to trade mark owners.   The European Union Trade Mark Office (formerly the Office for Harmonisation in the Internal Market or OHIM) issued a Practice Direction in 2012 indicating that where class headings had been applied for in a trade mark application, the Office would consider that to mean that all of the goods and services covered by the class were protected.  Many practitioners questioned this and as a firm we have generally not relied on class headings because UK practice does not allow the use of class headings.  The UK Chartered Institute of Patent Attorneys forced the issue by filing an application for registration of the trade mark IP TRANSLATOR.  You may have heard of the case, which resulted in a decision by the European Court of Justice clarifying the position on class headings and meant that the European Union Intellectual Property Office (EUIPO) had to revisit its practice.

The EUIPO has clarified its position in the EU Trade Mark Regulation taking effect from 23 March 2016, so that where class headings are included as a specification, the use of class headings will cover only the goods and services covered by the literal meaning of the term.  However, the owners of registrations which cover class headings are being given the opportunity to change their list of goods and services to cover the goods and services they actually require to be protected rather than all goods or services in a particular class.  The deadline for filing an application to correct or modify a specification must be filed on or before 24 September 2016, or the goods and services covered by a registration will be limited to the literal meaning of the class heading only.

If you would like us to review your European Union Trade Mark Registrations and check whether any revision to the specification is desirable, please get in touch with us.