Community Trade Marks - Act NOW and make a declaration

Community Trade Mark ("CTM") owners will soon be offered a 6 month, one off opportunity to file a declaration at OHIM (soon to be known as the EUIPO) to clarify the goods and services covered by their registrations. The declarations apply to owners of CTM's filed before 22 June 2012 which were filed for entire class headings.

IP Translator Case

In 2012 the Court of Justice of the EU reached a decision in case C-307/10 (known as the "IP Translator case") which changed the way class headings are interpreted. Prior to the IP Translator case trade mark owners and advisors regularly filed applications using class headings in order to claim a broad monopoly of goods and services.

The IP Translator case involved a UK application by the Chartered Institute of Patent Agents to register the mark IP TRANSLATOR for the class 41 class heading "providing of training, entertainment, sporting and cultural activities."  The application was refused because it was descriptive in relation to translation services, even though the applicant had not specifically sought translation services in the application.

The decision in the IP TRANSLATOR case held that the protection covered by class headings should be limited to the literal meaning of the terms. Following this case applicants are required to specify the goods and services for which protection is sought to be identified with sufficient clarity and precision to enable the competent authorities and economic operators to determine the extent of the protection covered by the mark. This means that when filing applications applicants should use broad terms but also use terms to describe the exact goods and services which they want to protect.

The owners of CTM's filed before 2012 covering class headings will be given a 6 month window between 23 March 2016 and 23 September 2016 in which to file a declaration to amend the goods and services to those which they intended to cover in the first place. The 6 month window cannot be extended and if no declaration is filed the CTM's where no declaration has been filed will be deemed to cover the literal meaning of the goods and services listed under the class headings.

If a CTM was filed after 22 June 2012 covering the class headings, it is not possible to file a declaration and the mark will be considered to cover the literal meaning of the terms covered by the specification.

The owners of CTM's will not be contacted by OHIM directly to inform them of the opportunity to file the declaration.

If you would like to check if you are entitled to file an Article 28 Declaration or if you would like assistance in filing the Declaration, please contact McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com