Time Is Now to Assess E.U. TM Registration Goods Wording in Advance of September Deadline

There is a September 23, 2016 deadline for clarifying product or service specification wording within European trademark registrations in certain situations where that is necessary.

Trademark registration products and services are categorized by almost all commercially relevant national trademark registries around the world, including the U.S. and the E.U., into 45 International Classes (Classes). These Classes are used for administrative (particularly fee-charging) purposes. Also, to varying degrees depending upon the jurisdiction, Classes play a role in defining the parameters of trademark rights. For years there had been an understanding under E.U. trademark law that where an E.U. trademark registration covers so-called “Class heading” language, i.e., brief language that roughly summarizes the subject matter of a given Class, the registration is deemed to cover all of the more specific subject matter of the Class.

In recent years E.U. case law decisions have cast doubt on the assumed breadth of “Class heading” registrations, and in March 2016 a new set of comprehensive E.U. trademark regulations made crystal clear that going forward registrations, including “Class heading” registrations, shall be deemed to cover only the literal product or service wording listed in the registrations and nothing more. For example, the Class heading for Class 42 reads, “Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.” In the case of a registration for a mark that covers online software rendered as a service (services that are categorized in Class 42) in the “real world,” that service is outside of the scope of the Class heading language and would not be covered by the wording in the registration under the new practices. If the registration only lists that Class heading, the registration might not be effective for purposes of enforcement and might be subject to invalidity action for non-use in relation to the listed Class heading goods, which are inaccurate where interpreted literally.

The good news is that the new E.U. regulations allow owners of “Class heading” registrations to amend their registrations to specify the specific product or service wording within the Class where “Class heading” wording has been used if they act by September 23, 2016. You should contact your attorney for help with assessing whether action is necessary for your company’s E.U. trademark applications or registrations, or you might reach out directly to local counsel for such advice.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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