EU Trade Mark Owners - Do You Need to File an Article 28 Declaration?

On 23 March 2016, the new European Trade Mark Regulation came into force, bringing with it various changes to EU trade mark law.  The new Regulation gives owners of EU trade mark registrations a one off opportunity to amend the specifications of their registrations by 24 September 2016, but who is entitled to make an amendment, and what amendments can be made?

Why this one off opportunity?

Under previous EU practice, where an applicant covered an entire Nice class heading in its EU trade mark application, this was deemed to cover all goods in that class.  Following the decision of the CJEU on the IP TRANSLATOR case, the EUIPO changed its practice on 20 June 2012.  From that date, applications and registrations which cover the Nice class heading have been deemed to include only those goods covered by a literal interpretation of the class heading.

Article 28 of the new EU Regulation therefore provides a transitional period to ensure that proprietors of EU trade mark registrations which cover class headings will not suffer any loss of protection following the change in practice, by allowing them an opportunity to declare that, by using the Nice class heading, they intended to cover more than just the literal interpretation of that class heading.

Who can file a declaration under Article 28?

To file a declaration under Article 28, you must be the proprietor of an EU trade mark registration, or an international registration designating the EU, which:

  1. Was filed (or designated) before 22 June 2012 and registered before 23 March 2016; and
  2. Covers the entire heading of a Nice class under the version of the Nice Classification which was in force at the date of filing.

What is the deadline for filing an Article 28 declaration?

EU trade mark proprietors meeting the above conditions have until 24 September 2016 to file a declaration under Article 28 of the new European Trade Mark Regulation.  As this date falls on a Saturday, declarations may effectively be filed up until Monday 26September 2016.

Do I have to file an Article 28 declaration?

There is no obligation on proprietors to file an Article 28 declaration, but all EU trade mark proprietors should consider whether their registrations might be affected by the change in practice, to ensure they do not suffer any loss in protection.

What amendments can I make in an Article 28 declaration?

Proprietors can only specify goods or services that go beyond the literal meaning of the class heading.  So, for example, the owner of a registration which covers the class heading “Clothing, footwear, headgear” in Class 25 cannot file a declaration to add “t-shirts; sandals; hats”, since such goods are already covered by a literal interpretation of the class heading.

In addition, the Article 28 declaration can only be used to add goods/services that are included in the alphabetical list of the Nice Classification in force at the date of filing.  Any non-standard terms that are not included in the alphabetical list cannot be added.

To assist trade mark owners in ascertaining what goods/services may be added to a registration under an Article 28 declaration, the EUIPO has provided a non-exhaustive list of examples of goods in the alphabetical list that are not covered by the literal meaning of the Nice class headings, under the various versions of the Nice Classification.  The list can be accessed via the EUIPO’s website.

My EU registration covers the Nice class heading, but with a limitation.  Can I file an Article 28 declaration?

No, the registration must cover the entire Nice class heading, without any limitations or exclusions.  The existence of additional goods/services in the specification does not preclude the application of Article 28 as long as the entire Nice class heading is included and is not limited in any way.

Where can I get more information?

For more information on Article 28 declarations, or if you need to seek specific legal advice, please contact Laurie Smith or your usual J A Kemp advisor, all of whom can be contacted on +44 (0)20 3077 8600.

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