Loss of trade mark rights by default?

Owners of registered community trademarks (CTMs) filed before 22 June 2012 may soon lose the full scope of coverage that they thought they had in terms of types of goods and services covered by their trade mark. They will have a one off opportunity to take action to prevent this only between 23 March and 23 September 2016.

This is all because of a 2012 CJEU decision which has become infamously known as the "Translator case". CTMs often used trade mark class headings as a short form way to cover goods and services in the whole of the relevant class. However the Translator case decided that this should no longer be so and that the CTMs covered should be limited to the literal meaning of the words specified in the class heading. Of course, this means that any product or service not included in the literal meaning of the words in the class headings will be outside the scope of the CTM in question. As the classes under the trade mark Nice classification system include lengthy lists of types of goods and services, there is potentially a lot to lose!

The new EU trade mark regulation will introduce changes in its Article 12. It offers existing CTM owners the chance to alter the existing specifications of their marks in recognition that the changes will take effect retrospectively. Thus between 23 March and 23 September 2016, CTM owners will be able to put forward a declaration setting out that they intended when they filed their applications to protect all of the goods and services in the relevant class by merely quoting the class headings. All of these goods and services will effectively then be added into the specifications of the registrations concerned and will (once again!) widen their scope. If such action is not taken, and taken timeously, the relevant trade marks will be limited to cover only the literal meaning of the words in the class heading.

The precise details of the approach to be taken are not yet finally settled but CTM owners should be aware of the issue and these dates. They should take advice from their IP advisor sooner rather than later if they wish to avoid missing out on this one off opportunity to retain and possibly widen coverage that they probably thought they had in the first place.