Changes in European Trademark Law

There is one aspect of European Trademark law related to how the European Union Implemented the so-called International Classification system for goods and services, which I have always found objectionable.  There are 34 broadly defined classes of goods and 11 broadly defined classes of services in the International Classification system.   In Canada and the United States, when you apply for Trademark protection you must identify the goods and/or services with which the Trademark is associated.  A very specific list must be presented, using ordinary commercial terminology, for example, “adhesives”.  To be clear, the US has adopted the International Classification system, but still requires a description of the specific goods and/or services.  By contrast, under European Trademark Law, the applicant is able to specify all of the goods and/or services in each of the classes in which any of the applicant’s goods and/or services fall. . For example, an applicant for a European trademark registration having a trademark associated with “adhesives”, would be able to list the general goods description for the class containing “adhesives” (Class 1), as follows:
“Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry”.
When the Europeans tie up the entire class, this creates enormous problems for a Trademark Lawyer, such as myself.  My client can have his Trademark refused because someone else has a similar Trademark in the same class.   However, if the actual products were compared, it might be clear that confusion between the marks is unlikely, for example because the products are different, they are sold through different wholesale and retail channels, and they are sold to different customers.  For example, adhesives may be sold by chemical companies to distributors who supply adhesives to the lumber industry where they are used to glue wood chips together to form sheets of fibreboard.  In comparison, manure is sold by agricultural feedlots to suppliers who either sell the manure in bulk to agricultural businesses or in bags to consumer for use as fertilizer.  Just because “adhesive” and “manure” are both in Class 1 does not necessarily mean that the Trademarks will be confusing. Thankfully, we have received notification that changes to this objectionable aspect of European Trademark law came into effect on March 23, 2016.  All European Trademark Owners have been given a deadline to specify  the goods and/or services with which they are using their Trademark and, in future, persons applying for European Trademarks will have to similarly specify the goods and/services.   This is extremely important, due to the treaties we have entered into with the Europeans that permit them to Register their Trademarks in Canada.   It is also important to avoid Canadians being “blocked” when they are trying to protect their Trademarks in Europe.