June 2012
The Court of Justice of the European Union (CJEU) has issued an important trade mark decision, on the correct interpretation of Community Trade Mark (CTM) specifications.
An applicant for a trade mark must specify the goods or services for which they wish to use the mark. There are 45 different classes of goods and services, each with a general heading and an official list of goods and services falling in the class.
However, not all items in the lists are described by the general heading for the respective class.
Until now, the Community Trade Mark Office (OHIM) has interpreted any CTM application, using only the general heading to define the goods or services, as covering the entire list of goods or services for that class. This interpretation was irrespective of whether everything in that list was properly described by the general heading.
However, third parties, wanting to use such a registered CTM for listed goods or services which were not described by the heading, did not know if such use would infringe the CTM registration.
The decision of the CJEU clarifies that OHIM’s interpretation applies to potential infringement of registered CTMs.
OHIM has responded swiftly. It has announced a change in practice, effective from 21 June 2012.
For all CTM applications filed on or after 21 June 2012, the applicants must either state that they intend to cover all the goods or services in the class, or indicate the specific goods or services which they wish to include. If they fail to do either, OHIM will object to the application.
For such marks dated before the 21 June 2012, OHIM will consider that they cover all the goods or services listed for the class. If the applicants or proprietors want to direct the registration to a narrower list, they must actively surrender the rest of the class.
CTM proprietors should review their current portfolio. Registrations which cover general class headings may now be vulnerable to part revocation, on the basis that the mark is not used upon all goods listed for that class. If so, the proprietors should consider surrendering such a registration, in favour of one with a restricted list of goods or services.
If you require further advice concerning this or any other trade mark issue, please contact one of our trade mark attorneys.