Trade Marks
Posted on 24/8/2016

One month to go – Article 28(8) EUTMR declarations

Owners of EU trade mark registrations should check if they need to take action.

Proprietors of European Union trade mark registrations applied for before 22 June 2012 and registered before 23 March 2016 have one month left to avoid loss of rights.

This is a result of amendments to EU trade mark regulation which came into effect on 23 March 2016 and allow for a six month transitional period which ends on 24 September 2016.

The EUIPO previously interpreted use of the “class heading” (the brief summary of the type of goods or services included in a class) in the specification of a trade mark registration as covering all goods or services in the class. This approach was changed by the European Court of Justice in 2012 which ruled that a literal interpretation of specifications should be adopted.

To avoid loss of rights as a result of this decision, proprietors of EU trade mark registrations filed before 22 June 2012 and registered before 23 March 2016 for an entire class heading may file a declaration identifying goods or services of interest which are included in the alphabetical list for the class in question (in the edition of the Nice Classification in force at the date of filing) by 24 September 2016.

Owners of registrations applied for before 22 June 2012 and granted before 23 March 2016 should review their registrations and consider if filing a declaration would be appropriate.

We have written to advise all owners of affected Community trade mark registrations filed before 22 June 2012 which are on our records. However if you are uncertain of your position, or would like further advice on this matter, please get in touch with your usual Wilson Gunn contact or give us a call on 08444 77 00 22.

Wilson Gunn