IP Law Bulletin

There is a September 23, 2016 deadline for clarifying product or service specification wording within European trademark registrations in certain situations where that is necessary.

Trademark registration products and services are categorized by almost all commercially relevant national trademark registries around the world, including the U.S. and the E.U., into 45 International Classes (Classes). These Classes are used for administrative (particularly fee-charging) purposes. Also, to varying degrees depending upon the jurisdiction, Classes play a role in defining the parameters of trademark rights. For years there had been an understanding under E.U. trademark law that where an E.U. trademark registration covers so-called “Class heading” language, i.e., brief language that roughly summarizes the subject matter of a given Class, the registration is deemed to cover all of the more specific subject matter of the Class.

The European Union’s (EU) trademark regulations are undergoing a significant overhaul as of March 23, 2016. For starters, the terminology is changing: the title “Community Trade Mark” or “CTM,” will be replaced by “European Union Trade Mark,” or “EUTM.”

There are more changes than can be fully summarized within the scope of this blog post. Here are three changes in particular that brand owners should be mindful of:

The European Court of Justice (ECJ) ruled on Tuesday that the “Safe Harbor” data transfer regulatory framework, which had enabled the otherwise prohibited transmission of European Union residents’ personal information to the U.S., is invalid. The program enabled those who collect data in the European Union to transmit the data to the United States notwithstanding the E.U. determination that the U.S. lacks “adequate” privacy laws. Companies who have relied upon or who were planning to rely upon the Safe Harbor scheme should assess the alternatives that are available and adjust their practices accordingly.