Takeaway: Before the deadline on September 23, 2016, European trademark owners of applications filed prior to June 22, 2012 may need to clarify within their trademark specification which goods and services they intended to seek protection for their mark or else they may only receive protection covered by the pure literal meaning of the class heading.
The Community Trade Mark (“CTM”) is a single trademark registration that covers all countries in the European Union. On March 23, 2016, the amended EU Trade Mark Regulation (Regulation (EU) 2015/2424) will take effect.
One of the amendments is that description of goods and services will be interpreted strictly by the class headings of the Nice Classification unless they are clarified in the trademark specification.
For new applications, the same scope of specificity is required for goods and services in respect to what protection is being sought to “be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought (Article 28(2)).”
Therefore, if a trademark owner believes that the goods and services that need to be protected are not necessarily what would be strictly interpreted from the class that the trademark is protected under, there will be a six-month grace period from March 23, 2016 to September 23, 2016 to make an Article 28(8) declaration.
The Article 28(8) declaration will allow trademark owners to clarify, from an alphabetical list, which goods and services they were intending to seek protection with their trademark specification that is beyond what is covered by the pure literal meaning of the class heading.
It is best to ask your trademark attorney to help you review your EU trademark portfolio to determine whether a declaration can and should be made.