By Vera Sung, Partner and Vincent Fong
Due to a change in the European Union trade marks law, a class heading under the Nice classification no longer interpreted as covering all the goods/services under such class. A class heading now only covers goods/services that fall under the literal meaning of that class heading.
For example, in the past the class heading of class 41 “Education; providing of training; entertainment; sporting and cultural activities.” would cover the services “translation”, after the change of the law the class heading of class 41 would no longer cover such item.
Who will be affected?
Trade mark owner who owns European trade mark (EUTM) that filed before 22 Jun 2012 covering an entire class heading in the specifications.
What action should be taken?
As a result of this change, the European Union Intellectual Property Office (EUIPO) allows owner of EUTM that is (1) filed before 22 June 2012, and (2) includes an entire class heading in the specifications, to file a declaration to declare its intention that the use of class heading was to cover goods/services beyond the literal meaning of the class heading.
The deadline to file such declaration is 24 September 2016. If the owner failed to file such declaration, the use of class heading in the specification would be deemed to cover goods/services under the literal meaning of the class heading.
What you should do?
If you own a EUTM that is filed before 22 June 2012, you should review the specification and check if the literal meaning of the specification sufficiently cover all the goods/services of interest.
How can OLN assist?
We can assist in identifying if the specification of the relevant EUTMs includes class heading, thus qualifying to file an Article 28 declaration. Further, we can advise the appropriate goods/services to be included in the declaration to protect your interest, and file the declaration on your behalf with the EUIPO.
This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.