Developments affecting EU trade mark owners

23 March 2016

Australian businesses operating internationally will need to consider the impact that changes in European Union trade mark law may have on their intellectual property rights.

Reforms to the EU trade marks system

The EU has a unified system for protecting a trade mark in all 28 countries across the EU with a single registration, previously known as a Community Trade Marks (CTM).  There are a number of changes coming into effect today:

  • CTMs will be renamed as European Union trade marks (EUTMs), and the administering body with the unorthodox name, Office for Harmonisation in the Internal Market (OHIM), will be renamed as the European Union Intellectual Property Office (EUIPO);
  • The official fees are being updated.  Official fees for registrations will be a little higher if three or more classes are included, while other fees will generally be reduced;
  • The EU is undertaking reform to promote consistency in practices across its various member states in relation to matters such as opposition provisions, administrative revocation procedures and a mandatory six-month grace period for late renewals; and
  • A change to interpreting descriptions of goods and services may limit the protection of some existing EUTMs unless their owners take corrective action within a six-month grace period.  This is discussed in detail in the following section.
Changes limit the scope of some EU trade marks – with a limited opportunity for owners to preserve their rights

As with most trade marks, EUTMs need to specify particular goods and/or services which fall into 45 numbered classes according to the international Nice classification system.  Each class has a general description identifying the scope of that class, called a “class heading”, and this is supplemented with a detailed list of different items falling within that class.  For example, the heading for class 25 is “clothing, footwear, headgear” but this class includes related items such as “scarves“.  Trade mark owners sometimes use their own descriptions of items not included on an official list, particularly for novel goods or services.

Trade mark owners sometimes use the class headings in their applications, and longstanding practice was to treat such EUTMs as effectively covering all goods or services in the relevant class.  This position changed following a landmark case, and as such EUTMs filed after 22 June 2012 with a class heading are deemed to cover only those goods or services covered by the literal meaning of the words in the description.  For example, a class 25 specification of “clothing, footwear, headgear” arguably might not include “scarves“.

The EU has announced the literal meaning interpretation will now be applied to all EUTMs.  Owners of registered EUTMs filed before 22 June 2012 that include a full class heading have until 23 September 2016 to update their registration to expressly specify any goods and/or services they wish to be included within the relevant class.  This transitional provision will only apply to trade marks meeting the following criteria:

  • EUTMs or international registrations filed under the Madrid Protocol designating the EU;
  • Registered, not pending applications;
  • Filed on or before 21 June 2012;
  • Include a full class heading in one or more classes (not followed by terms such as ‘namely’);
  • The owner intended the class heading to cover all goods or services in those classes; and
  • The owner wishes to expressly include goods or services not encompassed by the literal meaning of the words in the class heading, provided those goods or services were listed in the Nice classification alphabetical list in force as at the filing date.

This presents a timely opportunity for businesses to review any EUTMs they own to see whether these need to be updated to ensure appropriate protection is maintained over all goods and services relevant to their trade marks.

Ramifications of the UK’s possible exit from the EU

As the United Kingdom prepares for a referendum on 23 June 2016 to decide whether to leave the EU ‒ the so-called “Brexit” ‒ businesses around the world may contemplate what this means for their intellectual property portfolios.  If the UK relinquishes its EU membership:

  • EUTMs will no longer extend protection to the UK, losing a key European market;
  • It would be less attractive to register EUTMs rather than national trade marks in individual countries; and
  • It may be more difficult to maintain EUTMs without being able to rely on use in the UK.

There is no provision in EU law dealing with member states leaving the EU, leading to some uncertainty about how this would operate.  In practice, owners of EUTMs would likely have an opportunity to convert their registration to include a separate UK trade mark, or they could file separate trade mark applications with the UK Intellectual Property Office if necessary.

This all depends not only on whether the UK votes for the Brexit but also on the particular form this will take and the practical measures put in place to deal with this novel situation.  Additionally, there is a renewed prospect that Scotland could secede from the UK and re-enter the EU as a member state independently of England, Wales and Northern Ireland.

EUTM owners without corresponding national UK trade mark registrations should watch for developments in the latter half of the year following the referendum and be prepared to take swift action to preserve their intellectual property rights in the UK.

Please contact a member of our national Intellectual Property and Trade Marks team if you require further information or assistance.

This article was written by Nicholas Pullen, Partner and Scott La Rocca, Senior Associate.

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