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News from Members The community trademarks shall be modified starting from September 2016

The community trademarks shall be modified starting from September 2016

by Cosmovici Intellectual Property August 26, 2016

What you must know if you carry out your commercial activity in EU

Author: Lawyer Paul Cosmovici

Until 24 September 2016 all companies within the European Union which submitted community trademarks before 22 June 2012 must submit a statement to the European Intellectual Property Office (EUIPO) in which they must specify in detail the goods / services for which they want effective protection. After 24 September, these goods will no longer be protected by the generic name of the class they are classified under and their holders may face inconveniences if the competitor would submit a similar trademark, protected by a detailed specification.

According to the Nice Classification, goods and services are divided into 45 classes, of which 34 classes for goods and 11 classes for services. Each class is described by a summary ( "class heading"), which includes the key, basic products, describing briefly the nature of the goods / services of each class. For example, in Class 30, the summary is: "Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and cereal products, bread, pastry and confectionery, icecream; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces; spices; ice".

In the protection system provided by the European Intellectual Property Office for longtime the rule regarding the choice of products and services for which protection was required was that the summary of the class (that summary that includes key products / services for the respective class) was considered to provide protection for all goods / services of that class.
This practice has been embraced by most countries from EU, while others, like the UK, for example, considered that the terms of the class summary should be treated under their literal meaning and that it is inappropriate to infer, for example, by 'coffee, tea, cocoa, rice ", the chocolate pralines, pastry and confectionery.

During October 2009, the British Institute of Patent Advisers (CIPO) has submitted an application to the British Office for IP Translator trademark, from Class 41, using the class summary. The examiner has analyzed the trademark in accordance with the OHIM practice (currently EUIPO) at that time and has refused it on the grounds that the summary of Class 41 covers all services of this class, including translation services, the term "translator" of the trademark denomination being descriptive for this type of services, and therefore, not having the distinctive character required in order to be accepted as a trademark.

CIPO appealed and the court, observing the aspects of the issue has addressed a preliminary question to ECJ in order to clarify whether it is necessary to specify precisely the goods / services for which protection is required, or whether the class summary is considered to include all goods / services that could be part of that class.

ECJ’s answer given on 19 June 2012, caused a small earthquake in the universe of the holders of trademarks and of practitioners in IP because it overturned EUIPO practice until then. Thus, the Court ruled that it is necessary to identify the goods / services with sufficient clarity and precision, so that the competent authorities and business operators should identify them easily. Accordingly, any future application to EUIPO submitted for the class summary will be treated literally as providing protection exclusively to the products mentioned within that summary.

In order to achieve a customized protection on the business specifics of each holder, it is essential, thus, that the trademark should be submitted with the very clear identification of the products / services of which protection is aimed.
For trademarks submitted on the class summary until 22 June 2012, EUIPO provided the possibility to submit a statement, by their holders, through which they can identify with a greater accuracy the goods / services for which they want an effective protection.

Submitting this statement has a crucial role in the future protection of these trademarks, because, in its absence, the holders will be protected strictly regarding the goods / services listed in the summary. For example, a company which primary area of business consists in chocolate and chocolate products, protected only for the summary of Class 30, could face problems when it would want to oppose a similar trademark, submitted by a competitor for products clearly identified such as "chocolate, chocolate candies, pralines".

The deadline set by EUIPO for adjusting classes is 24 September 2016. Thereafter, the amendment is no longer allowed, holders of trademarks submitted on the class summary and not adjusted being at risk.

This decision has raised many controversies, being outlined, often, the question, whether it is enforced an excessive customization of goods / services that could benefit from protection. Contrary to appearances, however, the approach is qualitative, not quantitative, circumscribed to the idea that every business has certain characteristics, and each brand is centered on certain products, and accurate identification of them at the time of submitting the trademark will only help its holder to be able to outline a strategy as efficient as possible and to be able to achieve an effective protection, in case of any counterfeits or copies.

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