What EU Classification means to your brand

Towards the end of last year the European Union (EU) parliament approved the EU trademark reform package, which came into effect in March. On the surface there are a few changes to take note of — like the name change of the Office for Harmonization in the Internal Market (OHIM) and amendments to the fees structure.

In a nutshell, OHIM is now known as EUIPO, European Union Intellectual Property Office, which has an effect on invoicing and billing departments. And, when it comes to fees, overall all renewal fees have been reduced and there is now a one-fee-per-class rule.

But the big news, the news that affects trademark professionals and brands the most is the re-classification of class headings. EUIPO has set out a much narrower interpretation of class headings for Goods and Services for Community trademarks. Community trademarks have also undergone a name change and are now known as European Union trademarks. Under these new rules, EU trademark owners who originally used a class heading must clarify which goods and/or services they intended to seek protection for — so any items not specifically referred to in the Class Heading may not have protection.

What does this mean for brand owners or trademark professionals? They have six months — until 24 September 2016 to file a declaration with EUIPO to clarify which goods and services they want protected. This only applies to marks filed before the IP Translator decision in June 2012. If brands or trademark holders don’t do this, failing to amend or clarify the existing specifications could place owners at risk of losing valuable trademark rights, which could potentially lead to litigation.

So what needs to be done? Owners of EU trademarks should take the opportunity to perform a comprehensive audit of their registered marks filed prior to June 2012 to identify exactly where class headings were used. Once this has been established, they can notify EUIPO if needed.

While the changes have been made for the benefit of the industry, it is important that marks owners complete such an audit. Of course due to the sheer number of trademarks that some organisations hold it could be a daunting task. There are, however, solutions available that can streamline the process and make sure it is accomplished more quickly and more accurately.

To learn more about how we can help, contact us.