The most important change for trademark proprietors in the new trademark regulation concerns new EU trademark classification practices that will require several proprietors to respond promptly.
Active measures will be necessary for EU trademarks based on applications that were filed before 22 June 2012 applying class headings of the international Nice classification system. Under the previous practice, such trademarks were deemed to cover all goods or services in the requested class.
The legislative reform will expand this modern interpretative practice to cover old EU trademarks, thereby limiting their scope of protection.
Changes to the old EU registrations must be done within a six-month transition period, by 24 September 2016
The European trademark office will give trademark proprietors an opportunity to specify the registrations of old EU trademarks by adding further goods and services to their scope in order to conserve the originally intended protection conferred by the registration. This enables compensating for the narrowing of scope otherwise caused by the new interpretative practice.
Specifications of this kind will only be permitted during the six-month transition period, i.e. by 24 September 2016.
In practice, trademark proprietors should check the lists of goods and services covered by all of their EU trademark registrations filed before 22 June 2012. Specifications must be made if the application used a class heading that does not explicitly refer to the goods and services that the trademark is intended to protect.
If the list of goods and services used in an EU trademark registration is not specified within the transition period, the scope of protection conferred by the registration will subsequently be confined by a literal interpretation of the terms used in the list of goods and services.
Heinonen & Co, Attorneys-at-Law, Ltd will assist trademark proprietors in reviewing EU registrations and submitting specifications. Please contact our specialists for further details of our services.
Sassa Svahn, European Trademark Attorney
Kitty Zarbock, European Trademark Attorney