EUIPO 2/3: the new “classes” of the European Union Trademarks

Another very important change concerns the system of classification, which will influence retroactively also the trademarks already filed.

CLASSES OF GOODS OR SERVICES

Before the IP Translator decision (22.06.2012) anyone who filed a Community trademark could simply indicate the class of reference and its title to include in the protection all the goods or services comprised in that class. From 2012, however, it is necessary to specify in a precise way the goods or the services for which protection is sought, even if a poor specification as regards precision or clarity was not a reason for the refusal of a trademark application. Furthermore, the trademarks filed before 2012 were excluded from this regime, so anyone who filed a trademark application before that date indicating the title of the class in a generic way was always entitled to the protection extended to all goods or services.

Art. 28 of the new Regulation (Reg. 2015/2424), however, provides for the fact that if the goods and the services are not indicated in a precise and rigorous way the trademark application may be refused. Moreover, the title of the class will no more be considered as comprising all goods or services of the class even for those trademarks that were filed before 2012.

The owner of these trademarks, by and no later than 24.09.2016, can «declare that on the date of filing the intention thereof was to obtain the protection of other goods or services in addition to those covered by the literal meaning of the title of the class, on condition that the goods or the services designated in such a way appear in the alphabetical list of the class of the Nice classification, in the edition in force to the date of filing».

If no declaration is filed, the list of goods or services will be considered including «solely the goods or the products clearly covered by the literal meaning of the indications that appear in the title of the pertinent class», which may imply a significant reduction of the protection or even the complete elimination of the protection.

On this delicate topic we invite you to read the Circular of Studio Turini, which can be downloaded here:Circular Studio Turini_ EUIPO 2016_EN

  • Elsewhere