Article 28 declarations- what you need to know
Following some changes made by the European Union Intellectual Property Office, many trade mark owners need to re-consider their EU trade marks.
Previously, the EU IPO (before known as OHIM) considered any trade mark registered for the entire class heading as including any goods or services listed in the Nice classification.
This has now changed.
Now, they will only deem it as registered for the goods or services specifically stated in the class headings.
If your EU trade mark, previously a community trade mark, was registered before 22nd June 2012, you have the chance to file an Article 28 declaration to clarify or expand the goods or services your mark covers so as long as it still fits within the class heading.
If you do not do this, your trade mark will be restricted and may not be protected as it was previously.
An example to demonstrate is:
Class 25- clothing, footwear, headgear (entire class heading)
Accepted declaration addition- clothing, footwear, headgear, shorts, caps
So as long as the class heading is not narrowed or limited, the declaration should be accepted.
The EU IPO have stated in relation to what will be accepted or not, “Declarations can only be made for specific goods or services contained within the alphabetical list and not covered by the literal meaning of the class heading for the class of the edition of the Nice Classification in force at the date of filing.”
There is an online form to submit these declarations, w=however be aware that you can only apply for one mark at a time so it can be time consuming but worth it to ensure your marks are sufficiently protected.
The Trademarkroom will be more than happy to assist you in the development of your Article 28 declaration, however, it will have to be you as the trade mark owner that submits the declaration otherwise it will be refused.
If you want to do this, be quick!
A period of 6 months starting from the 23rd March was given therefore only allowing you until the 24th September 2016 to submit any declarations.
For more guidance, contact Jane at The Trademarkroom.
By Ellis Sweetenham