How to Deal with Class Headings in EUTMs23 March 2016 by
The CJEU decision in IP TRANSLATOR (Case C-307/10) held that the scope of protection of a specification comprising the class headings of the Nice Classification is limited to the literal meaning of the terms used and does not cover “all goods” or “all services” in that class as some had previously thought. For CTMs (now “EUTMs”) or EUTM designations of IRs since 22 June 2012 (the date of the CJEU decision), OHIM (now “EUIPO”) has applied this “what you see is what you get” approach rather than the “class heading covers all” approach.
This decision has been formalised by Article 28 of the EU Trade Mark Regulation (No. 207/2009, as amended by the new EU Regulation No. 2015/2424) which came into force on 23 March 2016. But what about existing registrations filed before 22 June 2012 which list class headings? Because of OHIM’s previous practice, proprietors of these EUTMs might genuinely have intended to cover all goods or all services in the relevant classes. Article 28 provides a mechanism whereby the scope of such EUTM specifications can be clarified if steps are taken by 24 September 2016.
Declarations under Article 28
Article 28 provides a non-extendable period of six months during which proprietors of EUTMs and EUTM designations of IRs filed before 22 June 2012 and registered for a whole Nice class heading may file a declaration to indicate if at the time of filing they intended to cover a wider range of goods and services than is understood from the literal meaning of the class heading. A declaration under Article 28 allows them to expressly claim any goods and/or services that were previously ‘hidden’ by OHIM’s old “class covers all” approach.
Goods and services added by a declaration must be ones that are contained in the relevant edition of the Nice Classification that was in force at the time of filing the original application.
The EUIPO has compiled a non-exhaustive list of goods and services to assist EUTM owners in identifying those goods and services that might fall outside the literal meaning of the general indications of the class headings. This can be found here.
The procedure for filing an Article 28 declaration has been set out in a President’s Communication on the subject. Such a declaration should be filed online using a special form which is now available (for EUTM owners) or using the downloadable recordal form (for EUTM designations of IRs). There is no fee.
Once a declaration is made, the EUIPO will issue an acknowledgement and then proceed to examine the declaration to see if it complies with Article 28(8). If the declaration does not comply, OHIM will issue a deficiency letter.
Declarations will be rejected for, in particular:
- unclear, imprecise or unspecific expressions, e.g. “all goods in class 32” or “all goods not clearly covered by the literal meaning of the class heading”;
- declarations for goods/services clearly covered by the literal meaning, e.g. “shirts” in class 25, as this is clearly covered by the literal meaning of the general indication “clothing” in the class heading; or
- language which seeks to limit or disclaims the general indication of the class heading or to replace general indications by specific terms that are covered by the general indication. In effect, this is a form of surrender and in these cases, proprietors should file partial surrenders under Article 50 of the EUTM Regulation.
The proprietor has two months (which can be extended) to remedy the deficiency. If there is no response or the deficiency is not overcome, the declaration will be rejected. The proprietor may, however, file an appeal. If the declaration complies, then the Office will amend the register and the declaration will be published in the EUTM Bulletin.
Effect of Article 28 declaration
After 24 September 2016, all eligible EUTMs and EUTM designations of IRs for which no acceptable declaration has been filed will be deemed to protect only those goods or services covered by the literal meaning of the specification. Acceptable declarations filed within the time limit will take effect from the date of their entry in the Register.
Limitation of rights
Article 28(9) of the amended EUTM Regulation provides that a proprietor who has made an Article 28 declaration will not be able to prevent a third party from continuing to use a trade mark in relation to goods or services claimed under an Article 28 declaration, provided that the use of the trade mark for those goods or services commenced before the Register was amended and did not infringe the proprietor's rights on the basis of the literal meaning of the goods and services listed on the register at that time.
In addition, such a proprietor will not have the right to oppose or to apply for a declaration of invalidity of a later trade mark if that later trade mark was either in use or had been applied for before the Register was amended and the use of the trade mark in relation to any goods or services claimed under an Article 28 declaration did not infringe, or would not have infringed, the proprietor's rights based on the literal meaning of the goods and services listed on the register at that time.
What action should CTM proprietors take?
Proprietors of EUTMs or EUTM designations of IRs should take steps to evaluate their EUTM portfolio to identify any EUTMs filed on or before 22 June 2012 which contain specifications featuring a Nice class heading.
They should then think about whether there are any goods or services which they originally intended to protect at the time of filing which do not fall within the literal meaning of the class heading. For example, the literal meaning of the class heading in class 25, “clothing; footwear; headgear”, would not cover footwear accessories such as inner soles. By way of further example, air bags, anti-theft devices for vehicles and bicycle stands would not be covered by the literal meaning of the Class 12 heading which is “vehicles, apparatus for locomotion by land, air or water”. In such cases, an Article 28 declaration would need to be filed to secure protection for these goods.
If you have any queries regarding the application of Article 28 to your EUTM portfolio, please contact Anna Carboni, Emmy Hunt or your usual contact at Redd, copying any emails to firstname.lastname@example.org.