Reform of the European Union trademark system

18 April 2016

With effect of 23 March 2016, the European Union trademark system underwent substantial revisions.

The new law inter alia contains an important provision for EU trademarks which were filed before 22 June 2012 and whose lists of goods and services contain the class headings of a class according to the Nice Classification. Until 24 September 2016, the proprietors of such trademarks may file a declaration with the European Union Intellectual Property Office (EUIPO) stating that they intended to cover with their application also such goods or services that the Nice Classification allocates to a specific class, even if these are not covered by the literal meaning of the headings of that class. In such a declaration, the goods and services which the proprietor intended to cover beyond the class headings’ literal meaning shall be indicated in a clear, precise and specific manner.

Upon such declaration, the Office will amend the indications contained in the declaration to the list of goods and services of the respective EU trademark. In case a declaration is not filed until 24 September 2016, the respective EU trademark will, however, be deemed to be registered only for the goods or services covered by the literal meaning of said class headings.

In light of this new provision, proprietors of EU trademarks should check whether the lists of goods and services of their trademarks contain the headings of a class of the Nice Classification of Goods and Services and, if need be, take the necessary steps until 24 September 2016 at the latest. We would be pleased to support you in doing this.