Changes to Community Trade Mark Law - Article 28(8)

February 2016

Following publication of the EU’s Trade Mark Amending Regulation, a number of important reforms to European Trade Mark law will enter into force on 23 March 2016.

One of the most significant changes will relate to how ‘class headings’ in the specifications of goods and services are interpreted, with the Regulation implementing the Court of Justice’s ‘IP Translator’ decision of 2012.

What are Class Headings?

The Nice Classification system consists of 45 classes of goods and services. Each class is headed by a ‘Class Heading’ which provides ‘General Indications’ relating to the fields to which the goods or services belong. For instance, the class heading in Class 15 consists of two general indications:  “musical instruments; stands and cases adapted for musical instruments.”

IP Translator

Prior to the IP translator decision, a trade mark registered for the full class heading was interpreted by the OHIM as protecting all the goods or services falling within that class. Therefore, a registration for the above Class 15 class heading would cover ‘extra’ goods, such as ‘tuning forks’ and ‘strings’, not expressly stated in the specification.

In IP Translator, the Court of Justice held that class headings should only be interpreted as covering their literal meaning and that no additional protection should be conferred by using the class heading i.e. what you see is what you get.

The Regulation and Article 28(8)

The Amending Regulation codifies this practice for (a) trade marks filed after ‘IP Translator' and (b) trade marks filed before the judgment.

To ensure that holders of the latter category of marks are not unfairly prejudiced, Article 28(8) of the Regulation sets out a six-month period (between 23 March and 23 September) for proprietors of EU Trade Marks filed before 22 June 2012, to submit a declaration stating that the Nice Class headings set out in their specification were intended to cover goods or services beyond those covered by the literal meaning of the heading of that class.

Where such declaration is filed, the trade mark will continue to protect those ‘extra’ goods. Where no declaration is filed, the trade mark will be deemed to cover only the goods or services covered by the literal meaning of the class heading.

Defence for Third Parties

Any ‘expansion’ of trade mark rights (i.e. goods and services beyond the literal meaning of the class heading) resulting from the declarations will not allow a trade mark owner to subsequently enforce those additional rights against third parties where the third party activities pre-date the expansion and did not infringe upon the literal meaning of the specification at the time.

Partial Restriction – An Alternative Option?

A number of commentators have observed that there may be a way of circumventing the third party defences. In particular, if the holder of a registered trade mark containing class headings were to partially restrict the specification of their application before the Regulation comes into force, it seems they would effectively reach the same result achieved by the Declaration, but would not be subject to the defences set out in Art. 28(8). 

It is crucial that any partial restriction is carried out before the Regulation comes into force i.e. before 23 March 2016. If this is an option you are interested in, please get in touch with your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.

Otherwise, if you are the owner of a trade mark subject to the Declaration (i.e. filed before 22 June 2012 and containing at least one full class heading), we will contact you in the coming weeks to discuss how best to proceed. 

This update was prepared by Richard Wylie, Trade Mark Director and Sean McDonagh, Trainee Trade Mark Attorney in our Leeds office.

If you would like further advice on this or any other matter please contact Richard or Sean or your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.