New EU trademark rules - six months to expand lists of goods

The new EU Trademark Regulation becomes effective on 23 March 2016. A special feature of the rules is that it will be possible to expand the list of goods for up to six months in respect of some EU trademark registrations.

As mentioned in "Five important changes in the new EU trademark rules", the new Trademark Regulation becomes effective already on 23 March 2016.

For many years, the holders of EU trademarks have applied for the so-called "class heading" in order to obtain protection for all goods or services in the relevant Nice Classification class. This practice was ended by the CJEU's so-called IP Translator decision in June 2012 and the decision has now been implemented into the Trademark Regulation.

In future, class headings and general descriptions in lists of goods will only cover the goods and services that, based on a literal interpretation, are clearly comprised by the descriptions.

Trademark applicants should therefore pay attention to whether their lists of goods cover precisely the goods and services for which the trademark in question is to be used.

However, the EUIPO permits an expansion of the list in respect of applications for EU trademark registrations made before 22 June 2012 where the list of goods or services is indicated by use of the class heading in one or several classes. For a period until 24 September 2016, the above-mentioned trademark registration can be expanded to comprise all goods or services in the alphabetical list relating to the relevant class in the version of the Nice Classification that applied at the date of application.

Owners of EU trademarks registered in the class headings should therefore have such trademarks reviewed as soon as possible in order to ensure that the scope of protection is correct also after the Trademark Regulation has become effective.

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