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Insight

Change to guidance from EUIPO on filing declarations under Article 28(8) EUTMR

Following the recent European Union trade mark reforms, owners of registered European Union Trade Marks (EUTMs) filed before 22 June 2012 and which cover entire class headings, have been given the opportunity to extend the protection of these marks to cover other goods or services in the same Classes.

As you are already aware, following the recent European Union trade mark reforms, owners of registered European Union Trade Marks (EUTMs) filed before 22 June 2012 and which cover entire class headings, have been given the opportunity to extend the protection of these marks to cover other goods or services in the same Classes. The EUIPO published a Communication to this effect in February outlining its advice on filing Article 28(8) declarations. It made clear that declarations may only feature goods and services not covered by the literal meaning of the relevant Nice class heading. The EUIPO provided a non-exhaustive list of goods and services considered to be clearly not covered by the literal meaning as guidance. It was implied that filing for goods and services beyond those shown in the list, or where there was no "reasonable doubt", as pointed out in the EUIPO's Article 28 declaration FAQs, may lead to delays in the terms being accepted.

However, as a result of feedback from users, the EUIPO published a Notice in July along with a further non-exhaustive list of goods and services either clearly not covered, or not clearly covered by the literal meaning of the respective class headings for the purposes of declarations under Article 28(8) EUTMR. The EUIPO stated that the list is purely for the guidance of trade mark owners wishing to submit declarations. Therefore, brand owners who have used the EUIPO's original list of examples as guidance on whether to file a declaration or not, may need to review the EUIPOs second list. This is due to the differences between the lists. In the original list of goods and services considered to be clearly not covered by the literal meaning there were no terms in classes 6, 17, 23, 27, 32, 34, 36, 38, 42, 43 and 45. Therefore, brand owners may have erroneously concluded that if their registered rights only covers these classes, you need not file declarations. However, in the new list, there are terms in every class apart from classes 23 and 32.

The EUIPO's non-extendable deadline to file declarations making this change is still 23 September 2016.

Choosing not to make a declaration under Article 28(8) by 23 September 2016 for applicable marks will result in registered trade marks filed before 22 June 2012 being deemed to cover only goods and services covered by the literal meaning of the terms used in the class heading of the relevant class.

Please do not hesitate to contact Leighton Cassidy or your usual trade mark contact should you have any questions.  

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