The new trademark law enters into force on March 23, 2016. It contains in Art. 28 (8) EUTMR[1] a special regulation for those applicants who had community trademarks, in future union trademarks, registered before June 22, 2012. According to the new regulation, the list of goods and services of those union trademarks can be expressed more detailed and, thus, be extended under certain circumstances until September 24, 2016. Moreover, the above regulation is valid for IR trademarks with the designation EU.

This special regulation is due to the fact that union trademarks will only be valid for those goods and services, which are explicitly covered by the literal meaning of the terms in the list of goods and services of the registered union trademark. This clarity demanded by the jurisdiction supports the legal security of third parties with respect to trademarks but also the enforceability of the trademark proprietor’s rights.

If it is not made use of the above regulation for extension of the list of goods and services, the respective union trademark will from September 25, 2016 only cover those goods and services that are explicitly included in the literal meaning of the terms in the list of goods and services.

 

Example

In 2007, the community trademark “Excelsior” for goods in class 15 was registered under the sole generic term/title “music instruments” for the company PIGINI S.R.L.. PIGINI distributes accordions, which, for example, comprise several valves for generating tunes, and are distributed in respective cases or with a corresponding stand. Due to the now stricter interpretation of the terms of the list of goods and services, the latter-mentioned articles are not covered anymore by the literal meaning of the term “music instruments”. Therefore, the future scope of protection of the trademark would not cover these articles anymore. As these articles, however, are mentioned in the alphabetical list of all goods of class 15 in 2007, these articles can be added to the list of goods until September 24, 2016.

 

The possibility of extending is valid for all trademarks filed before June 22, 2012 and registered before March 23, 2016. Therefore, we recommend checking the list of goods and services of your community trademarks/union trademarks filed before June 22, 2012 and registered in the meantime as well as of your registered IR trademarks with the designation EU, respectively.

Please note that despite of a change of your community trademark/union trademark due to such a declaration, these new/extended rights cannot prevent third parties from using their trademark for goods and services of your community trademark/union trademark. This is the case, if the usage had begun before the change of the register and your rights from the community trademark based on the literal meaning of the then registered goods and services have not been infringed. The extension of the list of goods and services does not provide the right to file an opposition against the younger trademark or to apply for a declaration of nullity of such a trademark, if the younger trademark had been used before changing the register or an application for registration of the trademark had been filed and the usage of the trademark for those goods and services would not have infringed your trademark rights based on the literal meaning of the registration of the goods and services in the register at that time.

[1] Community Trademark Regulation