Important Legal Change for Trademark Owners!
Are you owner of an “European Trademark” (formerly: “Community Trademark”)? If so, a change in legislation might require immediate action:
The relevant amendment of the European Trademark Regulation is applicable to all European Trademarks, which are
- filed before 22.06.2012,
- for the entire headings of a class of the Nice classification for goods and services.
It might be necessary to amend the classification of such a trademark until 24.09.2016 at the latest, otherwise the scope of protection of this trademark might be limited automatically to the literal meaning of the class headings of goods and services.
Examples:
The class heading for class 35 “advertising” has formerly been interpreted broadly, but would now not cover e.g. “conduct of opinion polls” any more.
The class heading “telecommunication” in class 38 does not cover “information on telecommunication” any more.
The class heading in class 9 for elder trademarks did not name “computer software”, but one could rely that “software” was covered by class 9-headin. This does not apply any more.
To prevent this from happening to your trademark, we can file a so called “Article 28/8-Declaration” with EUIPO. Therein, the trademark owner is able to declare that the trademark shall also cover those goods or services, not covered by the literal meaning of the class headings.
We would perform a check, whether an Article 28/8-Declaration is necessary for this trademark, for a flat fee or EUR 50,– (excl VAT). .
For drafting and submitting the declaration we would charge according to the amount of time necessary based on our hourly fees. The amount of work, in particular, depends on the fact, for which goods and services you seek protection. We will provide a cost estimate with the check-up.
Apart from this, you might partly surrender the trademark restricting it to specific goods or services to avoid vague terms in the classification; this is also possible after the above mentioned deadline, but – as mentioned – the classification may only be restricted.
We would be happy to assist you in this matter.
Contact us.