Summary of Changes in EU Trademark Law as from 23 March 2016

As you might already be aware, the European trademark law and practice has been subject to some changes in recent months which may also affect your registered Community Trademark(s) or your International Registration(s) designating the EU. We would, therefore, like to provide our clients with a brief overview of the most important changes and point out where it might be appropriate to take action. The information contained in this letter is of general nature, but we are, of course, always available in case of questions and for further explanations. Should we, in addition, see any need for you to take specific actions regarding your own trademarks, we will contact you individually during the next weeks and inform you accordingly.

 

1. Change of Name of the Office for Harmonization in the Internal Market

On 23 March 2016, the central registry for trademarks that provides protection throughout the territory of the European Union – that is in all 28 Member States – will change its name from “Office for Harmonization in the Internal Market” (OHIM) to “European Union Intellectual Property Office” (EUIPO). In parallel, the “Community Trademark” (CTM) and “Community Trademark Application” (CTMA) will be renamed to “European Union Trademark” (EUTM) and “European Union Trademark Application” (EUTMA).

2. Change in Official Fees

Since through its official fees the OHIM had earned substantial surpluses in recent years, the fee structure is now being reorganized.

While the basic fee for a trademark application so far covered up to three classes of goods and services, the system will be changed to a per class fee.

The fees for the renewal of Community Trademarks due after 23 March 2016 are lowered significantly and will then meet the application fees in amount and structure. The due date for the renewal shall be the date of expiry of the Community Trademark regardless of the date on which payment is actually received by the Office. If the due date is on 23 March 2016 or later, the new fees will apply. In case the renewal fees are paid before 23 March 2016 following the old fee schedule, the Office will refund the difference. Should the protection of a trademark expire before 23 March 2016 and the renewal fee is not paid until after 23 March 2016, the old (higher) fees will nevertheless apply.

The official opposition fee will amount to EUR 320 instead of EUR 350. For applications for invalidity or revocation (because of an alleged non-use) only EUR 630 instead of EUR 700 are to be paid. The appeal fee is reduced from EUR 800 to EUR 720 respectively.

3. Use of Class Headings of the Nice Classification in Lists of Goods and Services

In the following, the term „Community Trademarks“ shall also comprise International Registrations designating the European Union.

Trademark registrations are always protected only for the goods and services that have been designated in the so-called list of goods and services at the time of application. At a later stage, the scope of protection may only be reduced by restricting the list, but not extended. Therefore, it was and is common practice to draw up the list as broad in scope as possible at the time of filing. This is often done by resorting to the International Classification of Goods and Services, the so-called Nice Classification. This classification, in its currently 10^th edition, includes 45 classes, of which the first 34 refer to goods and the other 11 to services. The classification contains class headings which consist of general indications that show the basic direction of the goods / services generally falling into the respective class. In fact, regardless of those general indications that are explicitly listed, each class comprises ALL the goods / services that fall into the same field of goods / services as described by the general indications contained in the class headings. Even though the headings of each class are complemented by an alphabetical list with additional goods / services, this list is also not exhaustive. Instead, there exists no list of ALL conceivable goods / services of a class. Theoretically, however, each conceivable term describing a good or a service shall be assignable to one of the 45 classes and their thematic order.

For many years, it has therefore – although not without controversy – been assumed that Community Trademarks that if their respective list of goods and services covered all the class headings of the Nice Classification in a class were protected for all goods / services of that specific class including goods / services that were not covered by the literal meaning of the explicitly listed terms. This understanding changed in 2012 when the Court of Justice of the European Union, in its decision “IP Translator”, found that:

• The goods and services for which protection of a trademark is sought are to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark.
• The general indications of the class headings of the Nice Classification may still be used in trademark applications to identify the goods and services for which the protection of a trademark is sought, provided that such identification is sufficiently clear and precise.
• An applicant for a trademark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trademark is sought must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

a. The Scope of Protection of a Class when using the Class Headings

Against the background of this decision and starting from 23 March 2016, the EUIPO (formerly OHIM)  will interpret general terms, including the general indications of the class headings of the Nice Classification, by their literal meaning only. In other words, general terms will only comprise those goods and services which are clearly covered by its literal meaning. The German Patent and Trademark Office has been following this approach for some time already.

Proprietors of Community Trademarks that have an application date before 22 June 2012 and are registered for the whole class heading of a Nice class, now have the opportunity to declare in writing until 24 September 2016 at the latest that it had been their intention on the date of filing to seek protection for goods and services beyond those covered by the literal meaning of the respective class heading. Those additional goods and services have to be listed in a clear and precise manner and have to be contained in the alphabetical list of the edition of the Nice Classification in force at the date of filing.

Meanwhile, the OHIM has published a list of terms of the alphabetical list of the Nice Classification that it deems not comprised by the literal meaning of the class headings. The list is sorted by class and edition of the Nice Classification. It is not exhaustive, but still provides a good indication for a possible amendment of the list of goods and services of a registered Community Trademark. Upon request, we will be pleased to provide you with the OHIM list as well as the respective alphabetical list(s) of the Nice Classification.

If no such supplement declaration is filed until 24 September 2016, the respective Community Trademarks will only be protected for those goods or services, which are clearly covered by the literal meaning of the terms in the heading of the relevant class.

As far as Community Trademark Applications were filed after 22 June 2012, it is assumed that the applicants already had the chance to consider the decision "IP Translator" of the Court of Justice of the European Union and to amend their applications accordingly. For these pending and / or registered trademarks, there is no possibility to complement the terms of the list of goods and services.

b. The Scope of Protection of a Trademark for which the List of Goods and Services is amended until 24 September 2016

If the list of goods and services of a Community Trademark is amended to contain additional terms that were originally not covered by the literal meaning of the list, the trademark proprietor may nevertheless not proceed against the use of a mark by a third party in relation to goods or services where and to the extent that the use of the trademark for those goods or services commenced before the register was amended and did not infringe the proprietor's rights based on the literal meaning of the goods and services as registered at that time.

c. Trademark Applications using general Indications

In addition, the trademark offices of the European Union identified 5 general indications in the class headings of the Nice Classification that they deem too vague to meet the requirement of clarity and precision of goods and services as confirmed by the Court of Justice of the European Union. These terms are the following:

• Class 7: Machines
• Class 37: Repair
• Class 37: Installation services
• Class 40: Treatment of materials
• Class 45: Personal and social services rendered by others to meet the needs of individuals

When filing a new trademark application, the use of these general indications is no longer accepted. Instead, the applicant must file a clear and precise description of the goods or services for which protection is sought. Unfortunately, there is no exhaustive list of the individual terms covered by the above mentioned general indications. However, the applicant may rely on the alphabetical list of the Nice Classification. The individual terms contained therein will be generally suitable to describe the field of goods and services that a trademark is intended to cover. For any future trademark applications, we will, of course, take these requirements into account and propose lists of goods and services that have been drawn up accordingly.

 However, the Office will not ex officio change these non-acceptable 5 general indications as far as they are contained in the list of goods and services of already registered Community Trademarks. Instead, it is at the discretion of the trademark proprietor to amend and clarify the wording of the list of goods and services by way of a partial limitation so that in case of conflict the list will be sufficiently clear to proceed against a potential infringer. If you are not sure whether such a restriction is advisable in your case, you are welcome to contact us at any time for further advice.

4. Disclaimer

Furthermore, no disclaimers will be permitted from 23 March 2016. A disclaimer is a statement from a trademark applicant that – in view of an element of his trademark that is deemed not distinctive and that could give rise to doubts as to the scope of protection of the trademark – he will not claim any exclusive right to that element.

This applies to the kind of disclaimers that have been proposed by examiners ex officio in the course of registration proceedings or were voluntarily included by applicants. However, as far as such disclaimers are already contained in the description of registered trademarks, those are not affected. There is no need for action for trademark proprietors.

5. Black and White Marks

Moreover, the question frequently arose what effect it had if a trademark that was registered in black and white or greyscale was only used in color (or vice versa). The majority of the trademark offices of the European Union in the meantime agreed as part of their convergence program to the following and issued a Common Communication:

To maintain the rights that are granted by a trademark registration, the mark must be put to genuine use. That, however, is only the case if the mark is used in its registered form in the course of trade. An exception is made only if a trademark is used in a form that differs in elements which do not alter the distinctive character of the mark as registered; such use constitutes use of the mark as registered.

With regard to differences in color, the question is whether the use of a color version of a trademark registered in black and white or greyscale (or vice-versa) is acceptable for the purpose of establishing genuine use of the registered mark. The offices agreed to answer that question with „yes“ – as long as the mere change in color does not alter the distinctive character of the (registered) trademark. This is presumed if the following requirements are met:

• The word / figurative elements in the mark as registered and as used coincide and are the main distinctive elements.
• The contrast of shades is respected.
• Color or combination of colors does not possess distinctive character in itself and
• Color is not one of the main contributors to the overall distinctiveness of the mark.

Although these specifications continue to leave room for interpretation and argumentation, they may still be used as a reference by the trademark proprietor when he decides on the design of his trademark that he would like to use in the market. We encourage you to review the genuine use of your trademarks in particular with a view to the use in color. A timely change of use might prevent revocation requests by third parties alleging non-use of your trademark and reduce the effort needed to provide proof of genuine use of your trademark in case of dispute. Should you have any doubts whether the actual use of your trademark qualifies as genuine use of the registered mark, please do not hesitate to contact us at any time for a discussion and / or further advice.

Status: 1 March 2016 - © LexDellmeier