It has been just over a month since the Office for Harmonisation in the Internal Market (OHIM) became the Europe Union Intellectual Property Office (EUIPO). In addition to the renaming of the office, a number of changes to procedures and pricing came into effect on 23rd March 2016, the first of a two stage process. The second stage will take effect on 1st October 2017.
Of all the changes made, the most significant for trade mark proprietors to consider is the 6 month period which started on 23rd March 2016, during which specifications of goods of trade marks filed prior to 22 June 2012 which recite the full Nice class heading can be amended to particularise ‘orphan’ terms, under Article 28(8) of the amending EU trade mark Regulation. This 6 month period is non-extendible, so consideration of registered marks applied for during the relevant period is vital.
This period is not an open invitation for trade mark proprietors to amend and add terminology to the specifications of goods of their existing registrations. The purpose is only to allow inclusion of terms listed in the Nice alphabetical list at the time of filing which cannot be read literally from the class heading. Guidance from the EUIPO to clarify matters has been published. It is essential for proprietors of trade marks who intended, or even now intend to, protect any of these listed goods or services to make amendments to their specification by 24th September 2016.
It is also vital to remember that these amendments have no retroactive effect on third parties as this would be a violation of the legitimate expectations or acquired rights of third parties who were using, or applied for a mark, before the changes took place.
In the heat of discussions regarding the opportunities to amend specifications, commentaries have been published discussing the opportunity to amend by limitation under Article 50 EUTMA. Amendment by limitation can be carried out at any time, and clarification is not restricted to those goods listed in the Nice alphabetical list at the time of filing the application. As this is a limitation procedure, the limited goods are considered to have been covered by the registration since the time of filing, counter to Article 28(8) amendments which only come into effect from the time when the amendment is made and cannot be enforced against intervening rights holders.
It should be noted that the amendment must limit the scope of protection of the registration by removal of unclear terms and these terms can only be clarified with terms which do not substantially change the trade mark or extend the list of goods and services and thus could not include ‘orphan’ terms. Terms which lack clarity and precision have been identified by the EUIPO and can be reviewed here from page 8 onward. In summary, Article 50 is not an alternative to amendment under Article 28(8) EUTMR as it cannot be used to add orphan terms into the specification of goods.
At Finnegan, we appreciate that identifying which system is appropriate for you can be difficult, and we are of course happy to review your registrations and recommend the most appropriate course of action, whether that be not to make any amendments at all, to re-particularise orphan terms, limit unclear terms, or even file new applications to better protect the goods and services important to you and your business as it is today.
This post was authored by Clare A. Cornell, who recently joined Finnegan’s London office as a partner to help establish the firm’s European trademark practice. Clare’s practice focuses on trademark prosecution, maintenance, enforcement and opposition; clearance searching; portfolio management; IP due diligence; and IP licensing and transactions.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.