New OHIM Registry Practice for Community Trade Marks

Nice Class Headings

If your international brand portfolio includes Community trade marks (CTMs) which were filed prior to 22 June 2012, you should be carefully reviewing your portfolio in light of changes expected to come into force under the draft Community Trade Mark Regulation (Regulation), a revised draft of which was released last week.

International brand owners will be familiar with the classification system under the Nice Agreement concerning the International Classification of Goods and Services. The system consists of 34 classes of goods and 11 classes of services, explanatory notes and an alphabetical list of goods and services. The class headings provide a general indication of the fields to which the goods and services in each class belong.

Under current Office for Harmonization in the Internal Market (OHIM) practice, and following the Court of Justice of the European Union (CJEU) judgment in the IP Translator case in June 2012, a Community trade mark application must identify with sufficient ‘clarity’ and ‘precision’ the goods and services claimed by the applicant, to enable the competent authorities to determine on that basis alone the extent of protection conferred by the mark. The general class headings may be used, but the applicant must specify whether the application is intended to cover all goods or services included in the alphabetical list of that class, or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

The revised draft Regulation, which is expected to come into force in the next six months, will grant owners of CTMs which were filed before 22 June 2012 a new option to file a ‘declaration’ at OHIM. The declaration is to indicate their intention to seek protection for goods or services beyond the literal meaning of class headings, provided that those goods or services claimed were included in the version of the Nice alphabetical list in force when the CTM was originally filed. It will be possible to file the declaration within six months of the entry into force of the Regulation. If no declaration is filed within that period, CTMs covering the class headings will be deemed to extend only to goods or services covered by the literal meaning of the class headings in the original application.

Significantly, the draft Regulation provides that CTM owners who amend their specifications by filing a declaration will not be able to prevent a third party from continuing to use a trade mark in relation to goods or services where and to the extent that:

1. the use of the mark for those goods or services commenced before the register was amended
2. the use of the trade mark in relation to those goods or services did not infringe the proprietor’s rights based on the literal meaning of the goods and services on the register at that time.

CTM owners whose marks cover class headings should be carefully reviewing their trade mark portfolios now and considering whether amendments to the specifications of goods and services will be required after the Regulation comes into force. Some CTM owners may also consider filing additional trade mark applications before the new Regulation enters into force to supplement their pre-22 June 2012 trade mark rights and mitigate the risk of third parties relying on the exception to infringement noted above.

Key issues which you should be reviewing with your trade mark counsel now include:

• Do we own CTMs that were filed prior to 22 June 2012?
• If so, do those CTMs use class headings for the specification of goods/services in any class?
• If so, do those CTMs cover material brands for our business and/or goods or services which are core to our business?
• Which version of the Nice Classification was in force at the time of filing the relevant CTMs?

Are there potential gaps in protection which may be material to our enforcement strategy moving forward, and should additional protection be sought now? For example, is there likely to be a need to extend the scope of the goods/services beyond their literal meaning to include other goods/services belonging to a particular class for the purpose of offering complementary products or for future brand extensions?