Your European Community Trademark Is About to Disappear - BUT DON'T WORRY!

On Wednesday, March 23, 2016, changes are coming to the world of European Community trademarks and Community designs.

The Office for Harmonisation in the Internal Market (OHIM) has to date been the European Union (EU) authority responsible for examining new European Community trademark (CTM) and Community design applications and for maintaining registers of granted CTMs and Community designs.

On March 23, 2016, OHIM will be renamed the European Union Intellectual Property Office (EUIPO), while the CTM will be renamed the European Union trademark (EUTM).  Existing CTMs and CTM applications will automatically become EUTMs and EUTM applications.  Other changes include some small adjustments to filing and renewal fees.

There is one particular change of note with regard to CTMs, though it is unlikely to impact many of our U.S. clients.  In the past, if a CTM applicant listed the respective Nice classification heading in its application, it was interpreted as including all goods or services within the respective class.  This practice was terminated on June 22, 2012.  If an applicant used a Nice class heading after this date, the goods and/or services of the application were defined by the normal meaning of the words used in the class heading.

Thus, at present, the scope of goods and/or services for a CTM depends upon whether it was filed before or after June 22, 2012 and whether it recited the respective Nice class heading.  That is about to change.

During a six month window extending from March 23, 2016 to September 24, 2016, a registrant that: 1) filed its application before June 22, 2012; and 2) used the entire and exact Nice classification heading that was in force as of the application filing date can explicitly add or expand goods and/or services that were merely implied under the old regime.  Importantly, such newly added goods and/or services must have been in use for at least the five preceding years – otherwise, the amended registration may be subject to a cancellation proceeding.

So, if you have a registered CTM, don’t panic.  Instead, it would be prudent to check with your trademark attorney to see if addition or expansion of the recited goods and/or services is available and recommended.