New legislative changes in trademark law – how will this affect your registrations?

At the beginning of 2016 a new trademark directive and a new trademark regulation entered into force. The major issue which could potentially affect all rights holders, including both research and development companies and parallel import companies,  is a new classification practice whereby rights holders risk losing existing protection if no action is taken. Below we have summarised some of the new rules and the actions that are necessary.

To apply for a trademark, you need to identify the goods and services for which protection is wanted. All goods and services are divided into 45 classes, depending on their material and field of use. Each class has a so called class heading, which indicates the major goods and services belonging to that specific class. In the past, the general understanding within the EU was that by using the class heading, you automatically obtained protection for all goods and services belonging to the specific class. For example, if your registration covered the class 10 heading, namely “surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials”, this would automatically cover all goods belonging to the class including “contraceptives, ear protection devices, feeding bottles” etc.

Following a judgement by the European Court of Justice (“ECJ”) of 19 June 2012 (C-307/10, “IP TRANSLATOR”), the earlier practice was changed. The ECJ clarified that by using a class heading, protection would only be provided for the goods and services covered by the natural and literal meaning of a class heading. The result was that the scope of protection for class headings was interpreted differently depending on whether an EU application was filed before or after 20 June 2012.

As a result of the new trademark regulation, the scope of protection will be interpreted consistently for all trademark applications and registrations, irrespective of when an application was filed. The scope of protection for class headings for existing trademark registrations will therefore no longer automatically be interpreted to cover all goods and services belonging to a specific class, as this was thought to excessively restrict the market for other potential trademark holders. Referring to our example above, the trademark holder whose registration covers the class 10 heading therefore risks losing protection for goods covered by the earlier interpretation such as “contraceptives, ear protection devices, feeding bottles” etc. if no action is taken.

To not lose protection, trademark holders who filed an application before 20 June 2012 may file a declaration stating that a trademark should cover goods and services other than those covered by a class heading’s natural and literal meaning. Such a declaration must be filed before 24 September 2016. It is therefore recommended that all trademark holders review their existing trademarks to ensure that the trademark’s scope of protection corresponds to the trademark holder’s current and future needs. We can of course help you with this review of your trademark portfolio. When filing trademark applications going forward, trademark applicants must also take care to define the list of goods and services for which the applicant wants protection in a sufficiently clear and precise manner to avoid the application being rejected.

It may also be worth noting that the new regulation additionally includes more effective rules to prevent counterfeit. With the new rules, the trademark holders will be able to take action against counterfeit goods in transit in the EU, provided that the holder of the goods cannot prove that the goods are intended for a third country in which the trademark holder has no relevant protection. Trademark holders will also be able to take action against preparatory acts, such as labels using the trademark, even if the specific label has not been attached to any products.

As a result of the new trademark directive, a new trademark law will enter into force in Sweden, but this is likely to take some time. The EU Member States have three years to implement the changes and, for some procedural changes, the Member States will have as long as seven years to implement them.

We will continue to monitor and report on these major changes.