Changes to Community Trade Mark Law

You may be aware that a number of significant changes will shortly be implemented to the Community Trade Mark system.  These changes come into force on 23 March 2016.  Our comprehensive newsletter on all significant changes will follow shortly.

One potentially important change concerns the goods and services deemed covered by CTM registrations (including corresponding CTM designations under the Madrid system).   This change concerns, in particular, CTM registrations claiming inter alia, the “heading” of the class concerned.  (The term “Class Heading” means the summary of the goods and services of each class of the Nice Classification of Goods and Services in force when the CTM application in question, was filed – see here.)

If your, or your clients’, Community Trade Mark registration (or corresponding Madrid designation) includes the class heading, and was applied for prior to 22 June 2012, then it should be reviewed to ensure that it expressly covers everything the original application was intended to cover.

By way of example, “cotton wool” is probably not included within the literal meaning of the class 3 heading which currently reads “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.”  If it was intended that such a registration should have covered cotton wool and the proprietor wishes to ensure that the mark is protected for such goods, a corresponding declaration and request to amend the registration should be filed by the deadline of 24 September 2016.

By contrast, “wine” is plainly within the literal meaning of the class 33 heading namely “alcoholic beverages”.  Therefore, an application to include wine in a class 33 registration that currently lists just “Alcoholic beverages” would not, in our view, be necessary.

NB – The above applies to CTM registrations (or corresponding protected designations under the Madrid system) filed before 22^nd June 2012. It does not apply to pending applications (or pending Madrid designations).  If you or your client has such a pending application it may be possible to amend the specification of goods/services in accordance with the above.  However, any such amendment must be requested before 22^nd March 2016.

If you would like us to review your, or your clients’ CTMs, and to advise whether the filing of a declaration and a request to amend the goods/services they cover would be desirable, or if you have any questions, please do not hesitate to contact us bearing in mind the unextendible deadlines noted above.