One of the most important cases of the last few years, IP TRANSLATOR, held that protection provided by a trade mark covering the class headings of the Nice Classification is limited to the literal meaning of the terms. There is no additional protection obtained (i.e. all goods covered by the class) by using the class heading. This will be strictly interpreted for any trade marks filed after the decision issued in 2012. This means that you should use terms describing the particular goods and services of interest, in addition including any broad terms such as class headings if desired. However, this leaves many trade marks on the register from before IP TRANSLATOR for which the scope of protection is unclear.
The Community trade marks office, OHIM which will now be known as the EUIPO, and the national offices have issued a Common Communication stating how they intend to treat pre-existing registrations but this is not entirely satisfactory as the coverage of a CTM for example will vary from country to country.
The solution proposed in Article 28(8) of the new EU trade mark reforms Regulation, No. 2015/2424 (available here), is to have a short window of 6 months during which owners of CTMs dating from before 22 June 2012 which cover entire class headings will have an opportunity to amend the goods and services to include those which they really intended to cover, in addition to the class heading. After that period expires, CTMs will be interpreted strictly according to the literal meaning of the terms included.
What trade mark registrations are affected?
Community trade mark registrations filed before 22 June 2012 which contain the entire of a Nice Classification class heading. International Registrations designating the Community trade mark system with effect before 22 June 2012 are excluded under the draft OHIM / EUIPO Guidelines incorporating the changes.
What is the deadline to file Article 28(8) Declarations?
The deadline will be 23 September 2016.
What if I decide not to file an Article 28(8) Declaration?
If your Community trade mark was filed before 22 June 2012 and you decide not to file an Article 28(8) Declaration, your registration will be deemed to extend only to goods or services clearly covered by the literal meaning of the class heading terms.
What if my Community trade mark was filed on or after 22 June 2012?
Then you cannot file an Article 28(8) Declaration for your Community trade mark. Your Community trade mark will be considered to cover the literal meaning of the terms included in the goods and services specification (“means what it says”). If you are concerned that this may not cover your current areas of interest, please contact us and we can advise you accordingly.
What if my Community trade mark was filed on or before 22 June 2012 but has not yet been registered?
Under the draft OHIM / EUIPO Guidelines incorporating the changes, you cannot file an Article 28(8) Declaration for your Community trade mark. It may be possible to amend the class heading terms included in such applications by the partial withdrawal procedure to specifically set out the applicable terms from the alphabetical list. If you would like assistance on this, please contact us and we can advise you further.
Can I amend my registration to cover anything in that class?
You can amend your registration to include any terms in the alphabetical list for that class of the edition of the Nice Classification in force at the date of filing which are not already clearly covered by the literal meaning of the class heading terms. If you are unsure as to what was included in the alphabetical list at the date of filing, contact us and we can provide you with a list. Alternatively, simply tell us what you would like to have covered and we will check it against the relevant list.
We are happy to check items against the alphabetical lists and supply entire alphabetical lists without charge for any Community trade marks for which we are the OHIM representative. If we are not the OHIM representative for your Community trade mark, you can either:
(1) ask us to become the OHIM representative and we will then provide these value added services to you without charge; or
(2) if you do not want us to become the OHIM representative, we will be happy to provide these services for a nominal fee, for which we will quote you in advance depending on the number of trade marks involved and await your further instructions before proceeding.
If you wish to replace the class heading terms with more precise terms which are included in their scope, we would suggest use of the partial surrender procedure. If you would like assistance on this, please let us know.
What if my Community trade mark includes other goods in the class along with the class heading?
Additional goods and services in the class do not prevent you from filing an Article 28(8) Declaration, provided that the language used does not limit or disclaim the class heading.
What about national trade mark registrations?
National trade mark registrations are not affected. The national trade mark offices of the EU member states have issued a Common Communication on the Implementation of ‘IP Translator’ (available here) which sets out what they consider to be covered by their own national registrations containing class headings. If you have any queries about this, please let us know and we can explain this further.
What if my Community trade mark contains some but not all of the terms from a class heading?
Then you cannot file an Article 28(8) Declaration for your Community trade mark. If you are concerned that your Community trade mark registration may not cover your goods and services of interest, please contact us and we can provide you with our recommendations.
How do I know if my Community trade mark contains the entire of a Nice Classification class heading?
Ask us! We are happy to review any Community trade marks for which we are the OHIM representative without charge. If we are not the OHIM / EUIPO representative for your Community trade mark, you can either:
(1) ask us to become the OHIM representative and we will then review that trade mark without charge; or
(2) if you do not want us to become the OHIM representative, we will be happy to review that trade mark for a nominal fee, for which we will quote you in advance depending on the number of trade marks involved and await your further instructions before proceeding with the review.
Can my Article 28(8) Declaration or the amended registration be opposed by a third party?
No but the Article 28(8) Declaration will be examined by OHIM for compliance with the requirements and the amended registration is still subject to proof of use requirements.
What if someone infringes the goods or services added by the Article 28(8) Declaration?
The goods or services added by the Article 28(8) Declaration will not give you the right to prevent the use by third parties of those goods or services, provided that use commenced before the Article 28(8) Declaration and did not infringe your rights on the basis of the literal meaning of the goods and services contained in your registration at that time. Similarly, you cannot oppose an application for that trade mark or seek invalidity of its registration. This third party defence does not apply to applications for partial surrender filed before the new Regulation comes into force on 23 March 2016, so if this is a concern for you, please contact us as soon as possible for an audit of your trade mark portfolio and we can advise you accordingly.
Can you prepare and file the Article 28(8) Declaration for us?
We would be delighted to do so and we can provide tailored cost estimates depending on the marks involved.