SPECIFICATION OF GOODS AND SERVICES FOR YOUR TRADEMARKS: the President of the OHIM has just released a statement regarding the modalities of application for Article 28 (8) of the amended regulation on the European Union Trademark.
This statement concerns European Union trademarks or International trademarks designating the European Union filed before 22 June 2012 and registered before 23 March 2016 where the specification of products and services includes general indications covering the title of one or more classes of the Nice Classification.
As a result of the IP translator judgment by the ECJ on 19 June 2012 which ruled on the standards of clarity and precision required to complete a specification, the OHIM changed its interpretation, deciding that the title of a class covered all the products or services included in that class.
The European trademark reform which enters into force on 23 March 2016 goes back on this finding and imposes a literal interpretation of the specification contained in the class headings. Article 28(8) provides for a transitional period for trademarks prior to 22 June 2012 allowing the holder to claim protection not only for the products and services covered by the literal meaning of the Class Heading, but also for other products or services contained in the alphabetical list of the relevant class, subject to the edition in force at the time of filing.
Trademark holders can indicate their intention with a statement to that effect filed with the Office between 23 March 2016 and on 24 September 2016. After this time, the trademark will be deemed to protect only the products and services covered clearly by the literal meaning of the specification of the Class Headings concerned.
We therefore invite you to contact us so that we can examine the specifications of your trademarks to determine if they cover all your activities, or if products or services need to be added.
