On 15 December 2015 the European Parliament adopted the new Trademark Regulation. Many amendments are future-oriented, such as reduced fees and abolition of the system where the basic fee includes three classes, but the Regulation also includes some new issues that regard existing European trademark registrations. An important amendment, which regards the product description of existing European trademark registrations, will be discussed below.
A trademark application is always to be filed for the products for which the trademark will be used. These products (goods and services) are categorised in classes. Each class has a standard text, also known as the ꞌclass headingꞌ. The proprietor may use this class heading, but may also draw up its own list of products. For each class there is an alphabetical list of possible products that are accepted in that class.
Until 22 June 2012 it was generally accepted that a registration for the class heading of a specific class covered all the products in that class. For example, the class heading of class 15 consists of ꞌmusical instrumentsꞌ, but it used to be assumed that this class heading also included accessories such as ꞌtuning forksꞌ and ꞌmusic standsꞌ. After all, these are also products that are categorised in class 15. At the time that the trademark was used for ꞌtuning forksꞌ, it was sufficient that the trademark application was filed for ꞌmusical instrumentsꞌ in class 15.
The ruling of the European Court of Justice (ECJ) in the IP Translator case in June 2012 has changed this. In that ruling the ECJ held that the class headings are to be interpreted literally and no longer offer protection for all the products in the relevant class. Tuning forks and music stands are not instruments, so that, according to the ECJ, they are no longer automatically covered by the scope of protection. As a result of the ruling, these products are to be specifically included in the classification in order to be covered by the scope of protection.
For a long time, it was unclear how to deal with registrations the applications for which had been filed prior to the IP Translator ruling. It could be argued that these still came under the former regime (i.e. all products in that class) because they had been acquired prior to the IP Translator ruling. On the other hand, it could be argued that this new case law should extend to all existing registrations. The new Regulation has put an end to this uncertainty.
With effect from 23 September 2016, for registrations acquired prior to the IP Translator ruling, too, the class heading in the product description must be interpreted literally. Proprietors of registrations acquired prior to the class heading ruling will, however, be given a transitional period of six months to adjust their registrations. If a statement is filed between 23 March and 23 September 2016 to the effect that it was intended at the time of filing the application not to claim only the literal products in the class heading but also other products in the same class (identified in the statement), the registration will also cover those products and the product description will be extended to those products. If no such statement is filed in time, the registration will, from then on, only apply to the literal text of the product description. In such event the description ꞌmusical instrumentsꞌ will no longer cover ꞌtuning forksꞌ and ꞌmusic standsꞌ.
Points for attention
So, the statement seems to be a good solution to the problem created by the IP Translator ruling. There are, however, several points that require attention. For example, first of all, only products that are included in the alphabetical list for the relevant class may be claimed. Products seemingly covered by the class heading but not included in older versions of the alphabetical list at the time of registration (e.g. the rather new ꞌcloud computingꞌ service) cannot be claimed in this request for an ꞌoldꞌ registration.
In addition, the scope of protection is also slightly restricted. The products added will be covered by the scope of protection from their addition, but not with retroactive effective. The new product description cannot always be invoked in the event of a possible infringement. For if, prior to the addition to the product list of the foregoing registration, a third party had started using a similar or identical trademark for products that are included in the alphabetical list but that do not constitute infringement in the literal sense of the class heading claimed earlier, no action can be taken against such use. For example, the class heading of class 41 does not include translation or similar services. So, if translation services are still added to the class heading of class 41, no action can be taken against a newer trademark for translation services.
Therefore, this step seems to limit the scope of protection with possibly far-reaching consequences. There is, however, a small loophole to maintain as wide a scope of protection as possible. Until 23 March 2016 the European Trademark Office will still consider a class heading as covering all the products in that class. A limitation of products is always possible. For if, before 23 March 2016, the proprietor converts the class heading into all products except one, this will be a limitation of products and the trademark will not be covered by the regime that precludes taking action against a newer trademark as described above.
If you have a European trademark registration and you have doubts as to whether you are, and will remain, properly protected, please do not hesitate to contact us in good time before 23 March. The Arnold + Siedsma trademark agents will be happy to advise you. We can also assist you in limiting your product list in good time, so as to avoid unnecessary restrictions to the scope of protection.