Old trademarks: Late registration of goods and services until September 2016

In March 2016, the previous Community Trade Mark Regulation was replaced by the new European Union Trade Mark Regulation. This has resulted in a number of legal changes. Of particular importance for some existing trade marks is the subsequent registration of goods and services by September 2016 at the latest.

Trademarks are divided into 45 Nice classes and described in more detail within each class by a list of goods or services. Previously, generic terms could be used for this description in order to cover the class as a whole. This is no longer possible. Instead, only the individual goods or services described in the wording are protected.

By way of illustration:

The starting point for the new regulation is an ECJ case in 2012. It concerned the trade mark "IP Translator", which is registered in class 41. The generic terms of Class 41, which are intended to summarize it in a striking way, are: "education; training; entertainment; sporting activities; cultural activities". Such (official) generic terms for the Nice classes are very helpful in finding your way around the 45 different classes. Around 9,000 officially recognized goods and services are grouped into these 45 classes. However, the generic terms of the classes are sometimes poorly chosen, so that individual goods and services in a class are not covered by the generic terms. For example, the service "preparation of translations" is also assigned to class 41. The owners of the trademark "IP Translator" also wanted this service to be covered, but did not apply for "preparing translations", but for the generic terms of class 41 reproduced above in the belief that this would cover everything in class 41. However, none of the terms education, training, entertainment, sporting activities or cultural activities linguistically covers the service "preparing translations". This is despite the fact that the generic terms themselves should cover the whole of Class 41. The ECJ now had to decide whether or not the trade mark "IP Translator" enjoys protection for the provision of translations. In 2012, the ECJ ruled - unhelpfully - that trademark protection for the "creation of translations" was not excluded. The ruling raised many questions. The new EU Trade Mark Regulation now provides clarity.

The new legal situation does not only affect new trade marks. Rather, existing trade marks are also affected. Goods and services can be subsequently registered until 24.09.2016, but only for trade marks that were registered before 22.06.2012. If the list of goods and services is not amended, trade mark protection will be restricted and will only apply to goods and services "which are clearly covered by the literal meaning of the terms in the heading of the relevant class" (Art. 28 EU Trade Mark Regulation). In view of the unclear wording of Art. 28 of the EU Trade Mark Regulation, it is unclear and completely open which goods and services these should be.

Therefore, please check whether a subsequent registration of goods and services for your trademark can be considered by 24.09.2016 and ensure that the scope of protection of your trademark is maintained. You are also welcome to contact us for this. We will be happy to advise you on which strategy makes sense in your case.

Date: 1. Jun 2016