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23 December 2015
Pursuant to the decision of the European Court of Justice in the IP Translator case, in which the Court rejected the ‘class heading covers all’ approach, both the new Regulation on the European Union trademark (formerly known as the Community trademark) and the new Directive harmonizing national trademark laws now explicitly state that the use of general terms, including the class headings of the Nice Classification, shall be interpreted as including only the goods or services covered by the literal meaning of these general terms.
Holders of Community trademarks applied for before June 22, 2012 and covering the general terms of the class headings are however, according to the new Regulation, granted a six month grace period (i.e. until September 24, 2016) in which they may request the European Union Intellectual Property Office (formerly known as the Office for Harmonisation in the Internal Market or OHIM) to amend their specification of goods or services beyond those covered by the literal meaning of the heading of that class.
In absence of such amendments, the Community trademark will be deemed to extend only to the goods or services covered by the literal meaning of the terms included in the heading of the relevant class, which could therefore lead to a significant reduction of the scope of protection in some occasions.
At De Clercq & Partners, we are of the opinion that it is of utmost importance to already review and, where appropriate, adapt your Community trademark registrations before the new Regulation comes into force.
We can help you in assessing your trademark portfolio and identifying which Community trademark registrations could benefit from being amended to also include goods or services, which currently are not covered anymore according to the new Regulation (‘means what it says’ approach).
Should you wish to receive our professional assistance and advice or further information in this respect, please do not hesitate to contact one of our qualified European trademark attorneys or visit them at one of our offices.