September 12, 2016
Article 28(8) - Two Weeks to Go
Article 28(8) - Two Weeks to Go
Do you own any EUTMs that were filed prior to 22 June 2012?  Do any of them contain a claim to an official “class heading” in the specification?  If so, you may benefit from filing a declaration under Article 28(8) of the amended EU Trade Mark Regulation to clarify the breadth of coverage you intended to obtain when your EUTM was filed and you now have just two weeks left until the statutory deadline of 24 September 2016 in which to do so.  The deadline cannot be extended. The EU trade mark reforms and amended Regulation that came into effect on 23 March 2016 formalised a change of practice at the EUIPO relating to the interpretation of class headings within trade mark specifications.  Prior to 22 June 2012, the EUIPO (or OHIM, as it then was) interpreted specifications that covered an entire class heading as a claim to ALL goods/services that conceivably fell within the relevant class.  As of 22 June 2012, following a ruling on the IP Translator case, the Office adopted a “means-what-it-says” approach to class headings. The amending Regulation stipulates that after 24 September 2016 the specifications of all EUTMs, regardless of the time of filing, will be interpreted on the basis of “means-what-it-says”.  The owners of EUTMs filed prior to 22 June 2012 therefore have until 24 September 2016 to declare if they had the intention to cover any goods/services that fall outside of the literal and natural meaning of the terms in the class heading in force when their EUTM was filed.  Declarations made under Article 28(8) are therefore not full re-statements of the goods and services intended to be covered but an opportunity for EUTM holders to specify further terms (from a prescribed alphabetical list) that they intended to cover. The EUIPO is expecting thousands of declarations to be filed over the next fortnight.  Those who have recently filed declarations should therefore not be alarmed if it takes some time for the details to appear on the EUIPO’s database.  The latest guidance from the EUIPO is that it is likely to be January 2017 before details are published on the EUIPO online record. Holders of EUTMs eligible for an Article 28(8) Declaration should by now have been alerted to the possibility of filing a declaration by their trade mark advisor.  If you are concerned that you may have an EUTM eligible for a Declaration, please do not hesitate to contact us for advice and assistance.
Tags
Trademarks /  IP basics

Found this article interesting today?
Send us your thoughts: