The European Union Intellectual Property Office (EUIPO) deadline, giving owners of European Union trade mark registrations (EUTMs) covering entire class headings and filed before 22 June 2012 the opportunity to extend the protection of these marks, expired on 24 September 2016.
This extensive review came about as a result of the IP Translator case and required the input of affected owners. Owners of EUTMs predating 22 June 2012 and covering entire class headings were allowed a six month window, from 23 March 2016 until 24 September 2016, to file Article 28(8) declarations amending the goods and services to include terms describing specific goods and services of interest, in addition to the class heading. As of 24 September 2016 onwards, all EUTMs are to be interpreted according to the literal meaning of the terms included.
The EUIPO chose not to inform affected owners individually; issuing a Communication outlining the process in February 2016 instead. Owners of affected EUTMs filed before 22 June 2012 should have been advised by their representative of record at the EUIPO. There were also regular updates and guidance from the EUIPO and various intellectual property blogs, including SnIPpets.
During the six month process the EUIPO initially published an FAQ Guidelines document to assist affected owners. The EUIPO also issued 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 "reasonable doubt", as pointed out in the FAQs, could lead to a delay in the terms being accepted.
In July the process was complicated when, as a result of feedback from users, the EUIPO published a Notice along with a further non-exhaustive list of goods and services. The EUIPO stated that the second list was also purely for guidance. However, due to the differences between the lists, owners who had used the EUIPO's original list of examples as guidance, on whether to file a declaration or not, faced the predicament of having to review the EUIPOs second list. In the initial list of goods and services there were no terms in classes 6, 17, 23, 27, 32, 34, 36, 38, 42, 43 and 45 and owners may have wrongly concluded that if their registered rights only covered these classes, they need not file declarations. However, in the new list, there were terms in every class apart from classes 23 and 32.
The deadline to file declarations was initially set as 23 September 2016 and later changed, without warning, to 24 September (i.e. a Saturday). This meant that pursuant to Rule 72 EUTMIR the deadline automatically extended for the receipt of documents until 26 September 2016, the first working day of the Office.
We have started to receive examination receipts from the EUIPO, for declarations we filed on behalf of owners. We know of one example where the EUIPO examination of the Article 28(8) declaration overlooked the fact that absolute grounds were raised upon initial examination and that the amended term was initially refused. As it was refused on the grounds it was not inherently registrable, the Article 28(8) declaration should not have been filed in the first place and the fact that it was accepted by the EUIPO raised concerns for our client who was in adversarial registry proceedings with the owner. Although this may have been a one off, it has led some users to question how rigorous the examination of the Article 28(8) declaration actually is.
We are aware that a significant number of declarations were filed, with estimates in the region of 20,000. The EUIPO has confirmed that due to the volume of declarations filed, it may take between six to eight months for owners to receive the examination report and acceptance.
We expect this will be our last post on Article 28(8) declarations. However, if you have any questions regarding your trade mark portfolio, please get in touch with your usual trade mark contact.