Major changes to the underlying provisions of European Trademark Laws

The European Community Trademark Law has recently undergone extensive changes to its underlying provisions, namely the EU Trademark Regulation and the corresponding EU Trademark Directive. The new legislation enters into force on 23 March 2016.

Besides renaming OHIM to the European Union Intellectual Property Office (EUIPO) and the Community trade mark to the European Union trade mark, a major impact of these legal reforms will be the scope of protection of CTMs applied for the entire class headings of goods and services.

Trademarks falling into the following cumulative categories will be affected:

• CTMs filed before 22 June 2012 and registered before 23 March 2016
• CTMs claiming protection of entire class headings according  to the Nice Edition applicable at the time of  the filing date

All previous Editions of the Nice Classification can be found on the WIPO website. In order to avoid inadequate scope of protection, the owners of the above categorized trademarks have been given a possibility to file a declaration to the Office by 24 September 2016, specifying the exact goods and services intended to be covered by that application.

If no Declaration is filed before the deadline, those trademarks will be deemed to cover only the goods and services described in the literal meaning of the class heading.

Example: A trademark registered with the heading of class 45 “Education; providing of training; entertainment; sporting and cultural activities. (Nice 10^th edition), will not be protected anymore for “translation services”, also belonging to the alphabetical list of that class, unless explicitly specified.

Should you need assistance, our trademark attorneys at Dennemeyer & Associates remain available to assist you. Please do not hesitate to contact us at: info@dennemeyer-law.com.