If you don’t take advantage of this opportunity, you may find that the scope of your CTM has permanently narrowed.
Background
Registering a trade mark (e.g. for a logo or brand name) gives you a monopoly right to use your mark on a specified range of goods and services. When you apply for a trade mark, you choose the goods or services that you want your mark to cover. Prior to 2012, CTM applications often used general terms (such as the “class headings” in the Nice Classification) to ensure that the mark would encompass a broad range of similar products.
However, the class heading wording often does not include many of the goods or services actually falling within a class, when given its literal meaning. For example, the class heading wording for Class 13 of the Nice Classification is “Firearms; ammunition and projectiles; explosives; fireworks.” However, Class 13 in fact also covers a range of ancillary goods that are not within the literal meaning of the class heading, including cleaning brushes, noise suppressors and firing platforms.
Change to law on CTMs
Article 28(5) of the amendment to the EU trade mark regulation (which comes into force on 23 March 2016) says:
“The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.”
What does this mean?
If you want your CTM to cover goods/services that are not covered by the literal meaning of the class heading(s) used in the registration you have two options:
- make a declaration spelling out the additional goods or services that you want your mark to cover; or
- make a ‘partial surrender’ of your mark, deleting the class heading from the registration and replacing it with a long list of goods or services.
The option that is best for you will depend on your particular CTM portfolio.
Comment:
The six month window of opportunity for making a declaration to the EUIPO is from 23 March to 23 September this year. Taylor Vinters would be happy to advise on whether it is necessary to make any amendments to your CTM portfolio.
For more information, please call Louisa Dixon on +44 (0)1223 225182 or email [email protected].
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