Six month window for Community trade mark holders to make declaration of broader rights

The Office for Harmonisation in the Internal Market (OHIM) has issued a communication (8-page / 72KB PDF) that explains how businesses will be able to exercise their declaration rights as provided for under reforms to EU trade mark laws.

The new rules will see Community trade marks re-named as EU trade marks. Under a new regulation that will update Community trade mark rules, where businesses have used general terms to describe the goods and services for which their trade marks should apply to, including whole classes of goods and services as provided for under the Nice Classification, that wording will be "interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term".

The new regulation, however, accounts for cases where businesses intended their trade marks to apply to a broader range of goods or services.

Under the rules, owners of Community trade marks applied for before 22 June 2012 that have registered their marks "in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class of the edition of the Nice Classification in force at the date of filing".

The OHIM said that businesses that fall into that category will be able to make such a declaration between 23 March and 24 September this year. Declarations must be in writing, it said. The OHIM has created a specific online form to enable businesses to make declarations.

"The goods and services designated must be indicated in the proprietor's declaration in a clear, precise and specific manager," the OHIM's communication said. "The declaration must only include goods and/or services that: are contained in the alphabetical list for the class in question of the edition of the Nice Classification in force at the date of filing, and; are not clearly covered by the literal meaning of the general indications of the corresponding class heading."

"In particular, the [OHIM] will object to: claims for the entire alphabetical list; the use of unclear, imprecise or unspecific expressions; declarations for goods and services that are clearly covered by the literal meaning of the class heading; declarations for goods or services not contained in the alphabetical list in question," it said.

Prospective trade mark owners are required to specify which particular goods or services their marks are to cover when seeking registration of those marks. The goods and services are listed under broad 'classes' under the Nice Agreement.