09 September 2016
Please be aware that the six month grace period in which holders of EU trademarks (EUTM’s), filed prior to June 22, 2012, should request the European Union Intellectual Property Office (EUIPO) to amend their specification of goods or services in order to preserve the scope of protection of their EU trademark as originally intended, namely beyond the literal meaning of the class headings, expires on September 24, 2016.
As you will recall from our earlier communications, according to the new EU trademark Regulation, the use of class headings of the Nice Classification must be interpreted as including only the goods or services covered by the literal meaning of these general terms. Holders of EUTM’s filed prior to June 22, 2012 can however avoid a potential significant reduction of the scope of protection of their EUTM’s by filing a declaration with the EUIPO.
De Clercq & Partners urges you to review your portfolio of EUTM’s (filed before June 22, 2012) and to analyze whether the goods and services for which your EUTM’s are registered are class headings and whether these class headings also include the goods and services that are relevant for your business.
A declaration will have to be filed prior to the non-extendible deadline of September 24 if these relevant goods or services are not clearly covered by the literal meaning of the class headings used in your EUTM’s and provided that these goods or services are included in the alphabetical list for that class of the edition of the Nice Classification in force at the date of filing. A non-exhaustive list of examples of goods and services that go beyond the literal meaning of the class headings can be found here.