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Can we build it? Yes, we can! (But it may be too long…..)


13th Sep 2019

The EUIPO has faced a number of problems over the years in connection with acceptable specifications for EUTM applications.

Prior to 2012, it was held that a specification which consisted of or included the class heading would be interpreted as a claim to all goods or services in the list for that class. Post-2012, following the CJEU’s decision on the IP Translator case (Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10), the guidance was that specifications must be interpreted literally and cover only the precise goods and services specified. The EUIPO favours a “what you see is what you get” approach.

Largely as a result of the changed guidance regarding the scope of protection, there has been a tendency for the specifications of EUTM applications to get longer, as Applicants try to include all goods and services of possible interest.  EUTM Applicants are free to file for extremely broad specifications, as there is no requirement when filing a new EUTM application to confirm that there is a real intention to use the mark on all of the goods/services specified (unlike, for example, in the UK).

Recently the EUIPO noticed a steep increase in the trend for extremely lengthy specifications and published a notice warning about the possible disadvantages for an Applicant:

  • a higher risk of classification deficiencies;
  • delays in publication and registration of the EUTM;
  • an increased risk of conflicts with other trade marks (oppositions);
  • an increased risk of a trade mark being eventually cancelled because of a similarity to an earlier mark or non-use of all the registered goods and/or services.

In addition to issuing this warning, the EUIPO strongly recommended that Applicants should use its own tool, the G&S builder to help them create appropriate lists of goods and/or services.

Ironically, it seems that this tool may actually have contributed to the problem of overly lengthy specifications, particularly in Class 35.

The EUIPO goods and services builder has a special section called “Class 35 and 37 assistance”. For Class 37, you can tick one or both of the boxes for “Installation services of” or “Repair and maintenance of”. For Class 35, you can tick any or all of: “Retail services in relation to”, “Wholesale services in relation to”, “Catalogue retail services in relation to”, “Online retail services in relation to”, “Mail order services in relation to” and “Television shopping based retail services in relation to”.

Once you have selected the class and the appropriate tick-boxes, you can then select the items to which these services relate from an A-Z list from the other classes. The goods and services builder tool will then automatically generate services relating to the selected items.

If a user selects all 6 of the tick-boxes in Class 35 and then selects multiple goods and services in the second section, this can easily result in very lengthy specifications. For example, supposing that you are interested in all forms of retail and wholesale for cosmetics (Class 3), household utensils (Class 21) and toys (Class 28). You tick all 6 boxes in the Class 35 builder then select, say, 15 items in each of the 3 classes. This will produce a list of over 250 terms and over 4,500 words. Given that you could easily select many more items in each class – potentially hundreds of items – it’s easy to see how the word-count will mount up. Some recent Class 35 specifications have been found to be the length of a short novel!

The problem is not just in relation to services in Classes 35 and 37, however. The EUIPO has now reviewed the 30 longest specifications for applications filed in July 2019 and has found that most of these were for goods in Classes 8, 12, 20 and 21.

As well as the disadvantages these lengthy specifications can present for the new Applicant, as mentioned in the EUIPO’s warning notice, they also present a problem for the owners of prior rights. The owner of a prior right who has spotted the publication of an EUTM application for an identical or similar mark will not want to read the equivalent of a short book to find out whether the application covers directly conflicting goods/services!

The EUIPO encourages Applicants to use only the terms they really need when creating lists of goods and services.  But this notice has no legal weight and there is nothing to stop Applicants curating specifications of their choice.  Reddie & Grose attorneys are well used to finding the best compromise between breadth of protection and the risks the Office outline.  We are happy to advise on all matters relating to EU applications as we continue to act in the event of Brexit, as well as compare practices between the EUIPO and the UKIPO.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Catherine Nursaw
Senior Associate
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Would you like to know more? You can talk to Catherine Nursaw who will be able to help. Call +44 (0)20 7242 0901

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