New classification praxis for trademarks on its way

Boco IP assists its clients in reform of classification praxis

It has been concluded in April in the European Union that a reform of trademark legislation, namely the trademark regulation and Directive, will take place. The aim of the reform is to streamline, modernize and make the registration procedures in the EU as well as in Member States more efficient. Implementation of the reform will still need the official approvals in the EU, in the Finnish Ministry of Employment and Economy and the Finnish Parliament. The preparatory work of the reform will most likely commence in the autumn.

The expected reform will take into account the precedent of the Court of Justice of the European Union (so called IP Translator case), which concerns the unambiguity and precision of specifications of goods and services in trademark applications.

Is your trademark registered for a class heading?

The forthcoming changes will be of special importance regarding trademarks which have been registered for the so called class headings of the Nice classification system. Previously a class heading was interpreted to cover all possible goods or services in that class. The new practice interprets the goods and services according to their literal standard language.

The new practice entails the risk that the scope of protection of a registered trademark no longer contains goods and services which the owner intended at the time of the filing. The owners of CTM’s will thus be allowed a transition period of six months to itemize class headings and inaccurate wordings. After the transition period it will no longer be possible to make such amendments, and the specification of goods and services will thereafter be interpreted to cover goods and services according to the standard language. As of now, it is not yet certain whether this possibility to itemize the wordings will also concern national trademark registration within the EU.

We will follow the progress of the reform in the Ministry of Employment and Economy and the Parliament, and notify when information on the practical actions for specifying the class headings and vague product wordings is available.

We will provide our clients an itemization service which will include going through the lists of goods and services of registered trademarks, and the recording of the desired amendments thereto. We will inform you of the service once the detailed changes in the legislation and the timeframe are available.

Changes in official fees and the name of the OHIM

The reform aims at guiding applicants to obtain trademark protection with thought. The basic official fee for a CTM application will in the future cover one class only (as opposed to the current three classes). However, the basic fee will in future be a little bit lower than at present.

The official name of the OHIM (The Office for Harmonization in the Internal Market) will also change. The new name will be European Union Intellectual Property Office. Use of the name Community Trade Mark will also end and the new official name for the EU-wide trademark will be European Union trade mark.

Boco IP’s IP Law and Trademark Team wishes a great summer for all!

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