Changes to Trademark Registration in the European Union

On March 23, 2016, new rules came into effect substantially amending the Community trademark system in the European Union (the “amended Regulations”).[1] Below we discuss a number of points potentially relevant to U.S. brand owners, including (1) changes in terminology, (2) changes in fees, and, perhaps most important, (3) potential changes to the scope of protection of existing trademark registrations in the European Union.

Changes in Terminology

As of March 23, 2016, the amended Regulations simplified and made some terminology more intuitive (especially to non-European brand owners). The Community Trade Mark (“CTM”) will now be known as the European Union Trade Mark (“EUTM”). In addition, the office that oversees the system, the Office for Harmonization in the Internal Market (“OHIM”), will now be known as the European Union Intellectual Property Office (“EUIPO”). And references to “the Community” will be updated to “the Union.”

Changes in Fees

Also as of March 23, EUIPO has instituted a new fee system. Important to U.S. brand owners, the new system makes application filing fees—for applications with three or more classes—more expensive:

Also important to U.S. brand owners, the new system makes renewal fees quite a bit less expensive:

Goods and Services Descriptions—Significant Changes

A. Class Headings As Goods/Services Identifications

Traditionally, Community Trade Mark applications could be filed with broad goods and services identifications that consist of “class headings.” Such “class headings” correspond to goods classes 1-34 and services classes 35-45, and are set forth in an agreement often referred to as the “Nice Agreement.”[2]

Class headings are generally considered to be broad recitations of the types of goods or services included within each class. As one example, the “Class 8” class heading is “Hand tools and implements (hand-operated); cutlery; side arms; razors.” Accordingly, class 8 includes goods such as, for example:

·       “hammers,” “pliers,” and “screw drivers” (all “hand tools and implements”);

·       “knives,” “forks,” and “spoons” (all “cutlery”);

·       “swords” (“side arms”); and

·       “shaving blades” (“razors”).

Under the Nice Agreement, however, class 8 also includes some goods that do not literally fall within the class heading. For example, class 8 also includes the following goods:

·       “tool belts” (not literally “hand tools and implements”);

·       “boxes specially adapted for the storage of cutlery and flatwear” (not literally “cutlery”);

·       “sword scabbards” (not literally “swords”); and

·       “shaving cases” (not literally “razors”).

In U.S. practice, the U.S. Trademark Office will not allow an applicant to use a class heading as an identification of goods or services.[3] Instead, the U.S. Trademark Office generally requires much more specific goods and services identifications.[4] Accordingly, in the U.S., if an applicant tries to, for example, submit as a goods description: “hand tools and implements;” the U.S. Trademark Office will require a narrowing amendment along the lines of: “hand tools and implements, namely, hammers, pliers, and screw drivers.”

Such narrowing amendments would limit the identifications to the specific goods identified and would not cover goods not specifically identified.

Some non-U.S. jurisdictions, however, allow much broader identification of goods and services, including, in some cases, the use of class headings for broad coverage of goods or services in a particular class. OHIM allowed such class heading identifications in CTM applications, and now the EUIPO allows such class heading identifications in EUTM applications.

B. Changes to Past Practices

Under previous Community Trade Mark practice, trademark applications including “class headings” as goods or services descriptions were deemed to cover all goods and services within that particular class. Accordingly, an identification of “hand tools and implements (hand-operated); cutlery; side arms; razors” in class 8 of a CTM registration would be deemed to cover, for example:

·       “hammers,” “pliers,” and “screw drivers,” as well as “tool belts;”

·       “knives,” “forks,” and “spoons,” as well as “boxes specially adapted for the storage of cutlery and flatwear;”

·       “swords,” as well as “sword scabbards;” and

·       “shaving blades,” as well as “shaving cases.”

Under the amended Regulations, however, only goods and services that fall within the literal meaning of class headings will be covered. Accordingly, in the above example, under the amended Regulations, the highlighted goods above would not be covered as they would likely be deemed to fall outside of the literal meaning of the class heading.

C. Strategies Going Forward

Owners of EUTMs (formerly CTMs) filed before June 22, 2012, and designating the entire heading of a class will have some formal procedural recourse, however. Counsel for such owners may submit an “Article 28(8) Declaration” to the EUIPO no later than September 24, 2016.[5] Such a declaration would state the owner’s intention to seek protection for goods and services beyond those covered by the literal meaning of the class heading.

Accordingly, an owner of a CTM/EUTM registration (including an international registration designating the European Union) should work with counsel and take the following steps:

·       review the owner’s trademark portfolio to determine whether any class headings are included in identifications of goods or services;

·       if so, evaluate whether the literal construction of the class heading covers all goods or services of interest; and

·       if not, consider:

o   if the application was filed before June 22, 2012, preparing and filing an Article 28(8) declaration before September 24, 2016; or

o   if the application was not filed before June 22, 2012, preparing and filing a new application to cover goods falling outside of the “literal meaning” of class headings.

An Article 28(8) declaration, however, may only specify goods and services that go beyond the literal meaning of the class heading of that class, provided that those goods and services are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. In addition, an Article 28(8) declaration may not clarify “general indications lacking in clarity and precision.”[6] To make such a clarification, an owner must file a “Partial Surrender,” as under past practices.[7]

Lastly, national trademark offices for countries in the European Union are also adopting a “literal meaning” interpretation of class headings used as an identification of goods and services. Accordingly, an owner of any trademark registration in the European Union should also work with counsel to review its portfolio for use of class headings. Unfortunately, no “Article 28(8) declaration” is available for national registrations in the European Union, and owners may have to file new applications to cover goods falling outside of the “literal meaning” of class headings.

* * *

The above points are not exhaustive of all potential issues raised by the amended Regulations or changing trademark laws in the European Union. They do highlight some issues likely to be of concern to U.S. brand owners that have sought or are seeking to protect their interests in the European Union. Please consult counsel regarding further or specific questions on the topics discussed.

[7] See Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part E, Register Operations, Section 1, Changes in a Registration, paragraph 1.3.5, Partial Surrender.

© 2016 McDonnell Boehnen Hulbert & Berghoff LLP 

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