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Trade Mark Reform- Right holders must review their portfolios

Written by Thomas Mould on 26 May 2016

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The EU Intellectual Property Office (EUIPO) has issued a reminder to businesses that they may be able to extend the scope of their trade mark rights under recent changes to EU law.

Owners of EU trade marks (EUTMs), previously known as Community trade marks, were given a six month window between 23 March and 24 September this year to make a free declaration that their trade marks apply to a wider range of goods or services than has been detailed in registration of those marks.

Only some businesses can exercise the declaration rights, the EUIPO confirmed in a recent statement published on its website.

"Proprietors of EUTMs applied for before 22 June 2012 and registered in respect of the entire heading of a Nice class 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," the EUIPO said.

Under an EU regulation introduced earlier this year, where businesses have used general terms to describe the goods and services their trade marks should apply to, including whole classes of goods and services as provided for under the Nice Classification, that wording will be "interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term".

Owners of Community trade marks applied for before 22 June 2012 that have registered their marks "in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class of the edition of the Nice Classification in force at the date of filing", according to the rules.

Declarations must be in writing and the EUIPO has created a specific online form to enable businesses to make declarations of extended rights.

The EUIPO said: "The Office will object to: claims for the entire alphabetical list; the use of unclear, imprecise or unspecific expressions; declarations for goods and services that are clearly covered by the literal meaning of the class heading; declarations for goods or services not contained in the alphabetical list in question."

It is imperative that rights holders revisit their trade mark registrations and review the specifications to ensure that they don’t lose out of the scope of their trade mark rights.

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