The “Community Mark” system was modernized pursuant to the adoption of Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks (the “Directive“) and new Regulation No. 2015/2424 of 16 December 2015 (the “Regulation“) giving rise to the “European Union trade mark”.

As background, effective 19 January 2019 the Directive will repeal Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, while the Regulation, in force since 23 March 2016, will amend Regulation No. 207/2009 on the Community trade mark, the administration of which was under the Office for Harmonization in the Internal Market (OHIM).

Since the adoption of the Regulation, OHIM has become the European Union Intellectual Property Office (EUIPO).

One of the practical consequences of the Regulation, for holders of marks registered with EUIPO (formerly OHIM), is the requirement to draft clear, precise and detailed wording for the goods and services.

Thus, the registration of a mark with the general heading of a particular class (according to the Nice Classification) no longer includes as it did in the past all of the goods and services listed in that class.

For marks filed before 22 June 2012 with the general heading of a particular Nice Classification, the Regulation provides for a transitory phase to adapt the protection. Protection by a general heading can be broadened to sub-products and services by a statement filed with the EUIPO before 24 September 2016.

If that is not done, marks will be deemed to represent solely the goods and services clearly understood by the literal meaning of the general heading of the class concerned, and will no longer cover all of the goods and services listed in that class.

  • We thus strongly recommend that holders of European trade marks filed before 22 June 2012 verify, and as necessary, update the wording of the protected goods and/or services before 24 September 2016.

For more information, please click here.