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Strategic trademark filing in the Benelux and the EU

In filing trademark applications in general, the scope of protection ultimately obtained is generally determined by the designated goods and services.

After all, in principle, the trademark protection provided does not surpass the goods and services for which a mark is applied (while there are of course exceptions to this general rule of law). The specific practices of designating goods and services however differ from country to country. This article elaborates on the practice of designating goods or services in Benelux and Community trademark applications as opposed to the US practice, as well as the strategically advantageous implications of these systems.

In terms of goods and services listed in trademark applications or registrations, the Medinol case in the US has illustrated a large discrepancy between the trademark practice in the US on the one hand, and the EU on the other. Following the Medinol ruling, the validity of an entire US trademark registration may be at risk if the list of goods and services is defined too broadly, resulting from the owner”s overstatement of goods and services in the trademark application, which was looked upon as “fraud”. Although the Medinol doctrine has recently been refined in that “should have known” is no longer the standard, the penalty of total invalidity of the trademark registration still stands in cases where there was a wilful intent to deceive in overstating the goods.

In addition to the overstatement of goods possibly having the result of a completely invalid registration, general descriptions are not accepted by the USPTO, which imposes an obligation on trademark applicants to accurately and exactly formulate the list of goods and services in order to have the classification accepted.

Below, the reader will find an overview of the practice of the Benelux Office for Intellectual Property (BOIP) and the Office for Harmonization of the Internal Market (OHIM) in respect of the goods and services designated in a trademark registration as well as the possible consequences and advantages of overstating the goods and/or services in Benelux and Community Trademark (CTM) applications.

Application phase
Contrary to trademark practices such as in the US, neither Benelux nor CTM trademark applications (or national applications in most other EU countries, for that matter) require any formal statement regarding the goods or services. Or, more particularly, the actual or intended use thereof. The only required statement in this respect is made in the application itself, where the specific goods or services are designated. Broad descriptions of goods and/or services are generally accepted by the BOIP and the OHIM. For instance, if the applicant has a specific interest in men”s shirts, the International class heading description of class 25, which reads “clothing, shoes, headgear” will suffice; further specification of the products for which there is an actual intention to use is not required. In fact, the OHIM has advised that the designation of class headings in CTM applications covers all those goods and services possibly falling under the particular headings. Thus, not only are broad descriptions generally accepted, a broader scope of trademark protection is obtained in the process.

The goods and services under attack
During the first five years of a Benelux or CTM registration, the mark automatically remains valid for all the goods and services designated in the registration, regardless of whether there has been actual or intended use of the registered mark for these goods or services. Once the mark has been registered for over five years, it is subject to the use requirement, according to which the mark must have been in use for the designated goods or services in the previous five years, in order to remain valid for these goods or services.

Cancellation proceedings
At a certain point during the existence of a trademark registration, third parties may have an interest to attack the Benelux or CTM registration on the grounds of non-use of the mark for part of the designated goods or services. In such event a cancellation action can be initiated against the litigious registration. This can be effected either through court proceedings, in case of Benelux registrations, or before the OHIM, in case of CTM registrations. In addition, the cancellation of a CTM may also be invoked before the court. If successful, the action will result in the protection of the mark being stripped down to those goods or services for which the mark has been proven to be genuinely used. Only in the case where a trademark owner does not succeed in establishing any genuine use of the mark whatsoever, or where the trademark is used only for goods or services that are not at all covered by the trademark registration, this may lead to invalidity of the entire registration.

Opposition proceedings
In the course of opposition proceedings before the Benelux Office or the OHIM, it may be required to establish the validity of the registration(s) invoked by providing proof of genuine use of the mark, insofar as the mark invoked has been registered for five years or more. Upon the applicant”s request, the opponent is required to submit evidence that the mark(s) invoked has (have) been genuinely used during the five years preceding the publication date of the opposed mark.

Should the opponent not succeed in demonstrating use of the mark during the past five years for all the designated goods and services, the registration(s) will be considered only valid for the goods or services of which genuine use has been demonstrated.

This limited scope of protection is only held applicable within the frame of the opposition proceedings. The registration itself is not affected ex officio. However, when it is established that the mark has not been genuinely used for certain goods or services, any interested party may of course file a (partial) non-use cancellation action.

Maintaining a broad list of goods and services
Following case law of the Court of First Instance of the European Court of Justice, the requirement for the opponent to establish genuine use of its mark is to be regarded as “seeking to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services”. In other words, the mere fact that a trademark was registered for a broad list of goods and/or services, does not ensure a trademark owner that the registration is automatically upheld for all those goods or services falling within the broad categories.

In assessing whether the mark has been used for all the designated goods and services, the scope of the specific categories of goods and/or services has to be taken into account, in particular the extent to which the categories concerned are described in general terms for registration purposes. Consequently, if the registered goods or services are sufficiently broadly defined in that they can be divided into independent subcategories, use for goods falling under a certain subcategory affords protection only for that specific subcategory within the frame of opposition proceedings. However, this does not result in an ex officio ruling that the registration itself is affected in any way. On the other hand, if the goods or services for which a trademark is registered are defined so narrowly that it is not possible to make any significant subdivisions within the category concerned, the proof of genuine use of the mark for those goods or services necessarily covers the entire category.

For instance, in an opposition case before the OHIM earlier this year, the Office deemed use for biopsy instruments, biopsy needles and biopsy guns sufficient in order to maintain the registration for all designated goods, which concerned the more general and more broadly defined “surgical and medical apparatus and instruments; biopsy gun; reusable handle biopsy gun.

Advantages of filing broadly
The above shows that the only risk when filing the trademark application too broadly, is basically that the registration is stripped from protection for the goods or services for which it is proven that the mark has not been genuinely used in the five years preceding the cancellation action. However, such can only result from third parties initiating an action against the registration; the invalidity of the trademark registration for the non-used goods or services is not declared ex officio.

This practice provides possibilities for a more strategic approach in filing trademark applications. For instance, the advantage of filing for a broader list of goods and services (in particular for the International class headings) is that it enables expanding one”s initial activities under adequate trademark protection without having to file additional trademark applications. Additionally, a broad description of goods and services offers the trademark owner a wider basis to fence off competitors and prevent other parties from using a similar mark for goods or services that are similar to those mentioned in the registrations, but for which there may not be any actual use by the owner (at least during the first five years of the registration).

On the other hand of course, filing for a broader list of goods or services does bear an enhanced risk of oppositions being lodged against the application, as the “broad” application also concerns goods or services in which the applicant may not have any actual interests.

As the above illustrates, the practice in the Benelux or the EU in respect of filing and maintaining a broad list of goods and services is less strict when compared to the US practice in that there is no “fraud standard” bearing a risk of invalidity of the registration. Additionally, there is a smaller risk of a provisional refusal issued due to an insufficiently specified description of goods or services.

While an applicant should be careful in overstating goods and services in US trademark applications, the owner of a Benelux or CTM registration may only be stripped of the “superf luous” trademark protection obtained through the registration as a result of overstating the goods and services, and only after a third party has initiated (court) proceedings against that part of the registration.

Consequently, the trademark owner may thus benefit from the Benelux and EU practice in that trademark applications are allowed to be filed in a more strategic fashion. Companies outside of the EU that are interested in filing a Benelux or CTM application (not bound by a priority application) are generally advised to file an application for the International heading in addition to the specific goods or services of interest. For instance, where men”s shirts are particularly of interest, it is generally advised that the specification of a Benelux or CTM application reads “clothing, including shirts; shoes; headgear”.

Leaving the trademark owners a broad scope of protection, the filing practice within the Benelux and EU may very well provide trademark owners a headstart on their competitors.