The amendments to the legislative framework of the trademarks of the European Union which are about to enter into force will affect not only new applications, but also will influence certain trademarks that have already been registered. The amounts of fees and certain technical aspects will also undergo changes. Furthermore, the conditions concerning the use of the general indications of the class headings of the Nice Classification have also been provided. Should only new applicants be really concerned about the reform?
The reform is aimed at ensuring better access to the system of trademarks throughout the European Union and greater legal certainty. It is expected that appearance of a precise list of goods or services in the application will result in a decrease in the number of disputes, allow combatting counterfeiting in a more efficient manner. Unfortunately, the new procedure creates certain uncertainties. The provisions of the Regulation would have an impact not only on new applications, but also the applications for the trademarks aimed at protecting the goods or services designated by one class heading and filed till 22 June 2012.
Already in 2012, the Court of Justice of European Union delivered the famous judgement in the case IP Translator, thus, establishing the application of the principle of clarity and precision and pointing out the scope of protection granted to the trademarks registered for the class heading. In the light of the content of the afore-mentioned principle, the use of the generic indications of the class headings of the Nice Classification for identification of goods and services has not been prohibited.
It should be noted that the class heading covers only general terms; thus, the applicants have been urged to use them only in cases where the meaning is rather clear and precise and the scope of protection may be established both by the average consumer and the competent public authorities. And, conversely, if it is impossible to establish for what goods or services the protection is sought, the terms do not meet the requirement of clarity and precision. Therefore, the applicant must adjust the application specifying if his trademark will be used for designation of all goods and services included in the alphabetical list of the particular class heading or only for certain goods and services.
The use of the general indications of the class headings in applications for the trademarks still gives rise to much debate; thus, in pursuance of convergence of the practices of the European Union Intellectual Property Office and the practices of national offices of Member States, the afore-mentioned preliminary ruling of the Court of Justice has been set forth in Regulation 2015/2424 of the European Union and of the Council that will forthwith come into force. A part of provisions concerning use of the class headings in applications has remained unchanged. For example, use of the general indications is allowed, but in such case, the protection would be applicable not to the whole alphabetical list of the class, but only to the goods and service explicitly indicated in the respective heading. It may be concluded that application of the principle of clarity and precision becomes a cornerstone in the system of trademarks of the European Union contributing to reduction of the scope of legal protection for the trademarks registered for the respective heading.
How the reform of the legislative framework of the trademarks of the European Union will affect the applications filed already before delivery of the judgement in the case IP Translator? It would be erroneous to differentiate the scope of protection applicable to new applications and the scope of protection applicable to earlier applications due to application of the afore-mentioned principle. The Regulation provides for a possibility to take advantage of the transitional period of six months as of the effective date of the Regulation. During the afore-mentioned period the proprietor of the trademarks registered for the respective class heading will be entitled to file a revised trade mark declaration to the European Union Intellectual
Property Office. The declaration aims at notifying that on the date of filing the application the applicant intended to seek protection not only for the goods or services designated by such class heading used in literal terms. As regards the afore-mentioned revised declarations, there are several significant aspects. First, the lists of goods or services in such declarations must be clear, precise and specific to avoid any doubts about the goods or services for which protection was sought by the proprietor from the outset. Second, it is particularly important to properly establish the version of the Nice Classification valid at the moment of filing the application. If a trade mark is used for the goods and services which were not included in the then applicable version of the Nice Classification, the applicant will have to file a new application.
Certainly, filing of a declaration is not obligatory. The proprietors of trademarks may remain passive, but they would have to face the consequences of inaction, i.e. limited scope of protection. There is another opportunity, i.e. to promptly adjust the list of the goods or services designated by the EU trade mark already before the Regulation comes into force. In such case, only relevant goods and services for which proper protection should be granted may be indicated.
Notwithstanding the fact that, at first glance, the afore-mentioned amendments may seem complex, the proprietors of the trademarks of the European Union that have already been registered should not incur major losses: the reform provides an opportunity to adjust the scope of protection without payment of any official fees. Most importantly, one should carefully consider all possibilities and the consequences of their choices.