CTM Owners Take Note
Trademarks (whether registered in the UK or elsewhere) are registered in relation to particular classes of goods and services. In relation to Community Trade Marks (CTMs) the rules have changed and trademark owners have a 6 month window between 23 March and 24 September 2016 to take action.
OHIM is the body responsible for the registration of community trademarks and it operates under the Nice classification system which groups goods and services into 45 different classes. Each class has a heading which gives a general indication of the goods or services covered by that class but the class will cover a wider list of goods and services. For example the heading of class 25 is “clothing, footwear and headgear” but the actual list of goods within class 25 ranges from aprons to mittens to wimples, wooden shoes, wristbands and yokes (shirt -).
Previously OHIM treated any CTMs registered only in relation to the class heading as covering all goods or services within that class but this will no longer be the case. For CTMs filed before 22 June 2012 it will be possible to file a declaration to clarify or boost the specification of goods or services covered by your registration. Declarations can be filed during the six month window between 23 March and 24 September 2016. If you do not file a declaration your trademark will be treated by OHIM and the courts as being registered only for the goods or services within the literal meaning of the class heading and in many cases there are items which are not covered by the literal meaning of the class heading.
Ideally, trademark owners will review their existing CTMs and will file appropriate declarations but for those with extensive portfolios this may not be practical either from a time or cost perspective. Trademark owners should take advice from their trade mark advisors on how these changes will affect them and what they should be doing to protect their portfolios. At Tollers we work with specialist trademark agents so if you do need advice and are not sure who to contact then please talk to Tollers on 01908 396230 and speak to our Commercial Law team.