Until 24 September 2016, EU Trade Mark (EUTM) owners, as well as owners of relevant International Registrations designating the EU, have an opportunity to file a declaration with the EU Intellectual Property Office (EUIPO) to clarify the scope of protection of their trade mark.
The declaration can be made by the owners of registered EUTMs which qualify because they:
- were filed before 22 June 2012 and were registered before 23 March 2016; and
- cover an entire class heading.
For International Registrations designating the EU, the International Registration must have designated the EU before 22 June 2012, and have been the object of a second republication by the EUIPO before 23 March 2016.
What action should brand owners now take?
Brand owners should identify marks in their portfolios which may qualify because they were filed before the relevant date and cover an entire class heading. If they do own qualifying marks, a declaration can then be filed confirming that their intention on filing had been to seek protection for goods and/or services which go beyond those covered by the literal meaning of the class heading. If a declaration is not filed by 24 September for qualifying marks containing a class heading, from that point the class heading will be given its literal meaning only.
For brand owners deciding whether to file a declaration, much will depend on their EUTM filing strategies before 22 June 2012: i.e., did they routinely file for class headings or did their specifications contain specified terms, or did they file for class headings plus specified terms? Where class headings have been used, it will be necessary to compare, on a class by class basis, the guidance concerning those goods and services that the EUIPO considers are not covered by the literal meaning of a class heading as against the actual or intended use of the mark. If this reveals a potential gap in the scope of the protection, the brand owner should file a declaration before 24 September (the process is explained further below). For some brand owners, however, it may be too onerous to carry out this process on a mark by mark basis, in which case it may be simpler to file a blanket declaration across all qualifying marks in a portfolio.
We would be very happy to discuss with you whether any of your marks for which we are representative qualify for a declaration and, if so, whether a declaration should be made.
If you would like to discuss this with us further, please contact Sally Britton.
The background to this issue lies in a decision of the European Court of Justice in June 2012 - IP Translator - concerning the proper interpretation of class headings in trade mark specifications, which led to a change of practice at the EUIPO. The EUTM reform package, which came into effect in March 2016, codified the IP Translator decision: whilst class headings may still be used in trade mark specifications, they must be clear and precise. Further, protection will extend only to the literal meaning of the relevant indication or term. This 'means-what-it-says' approach applies to all new applications, but also applies to all EUTMs that were filed after 21 June 2012 (the date of the IP Translator decision). However, it was recognised that there should be a mechanism for those EUTM owners who had filed applications using class headings based on the EUIPO's previous practice that class headings covered all goods and services.
Accordingly, for EUTMs filed before 22 June 2012, that are registered in respect of all the general indications of a class heading, a literal interpretation will be applied, unless the owner files a declaration (called an Article 28(8) declaration) before 24 September 2016. In that declaration, the owner can confirm that, on filing the application, it intended to seek protection for goods and/or services going beyond the literal meaning.
Guidance on Article 28(8) declarations
The EUIPO has issued useful guidance materials, including:
In addition, it has published a non-exhaustive list of terms which it considers are clearly not covered by the literal meaning of the relevant class headings. It has also now published a further non-exhaustive list which includes terms which it considers are not clearly covered by the literal meaning of the relevant class heading (i.e., where there may be some doubt as to whether the term is covered or not by the literal meaning):
- Example terms clearly not covered and not clearly covered by the literal meaning of the relevant class headings
Which marks qualify for a declaration?
- The EUTM must have been filed before 22 June 2012 and the registration must cover at least one entire class heading. However, it does not matter if there are additional goods or services over and above the class heading, provided that the language does not limit or disclaim in any way the general indication.
- For an International Registration designating the EU, the applicant must have designated or subsequently designated the EU before 22 June 2012 and the mark must have been the object of a second republication by the EUIPO by 23 March 2016.
What can the declaration cover?
- The declaration can only be for goods and services which were in the relevant edition of the Nice Classification alphabetical list when the application was filed.
- The goods and services declared must go beyond the literal meaning of the relevant class heading. The EUIPO will accept declarations for goods and services that are clearly not covered and also those that are not clearly covered. For each mark and specification, the lists published by the EUIPO give non-exhaustive guidance as to what may be claimed for the relevant class based on the Nice classification edition in force at the time of filing.
- The EUIPO has issued an online form, but this only allows declarations to be filed in relation to single marks. However, for multiple declarations, a brand owner can use its own document. There is no EUIPO fee to file a declaration.
What are the implications of making a declaration?
- Any goods or services that are declared will be subject to the genuine use requirements from their filing/priority date. This is an important consideration as many of the marks which will qualify are likely to be subject to proof of use requirements.
- Any goods or services contained in a declaration cannot be relied upon in infringement proceedings against use which began before the declaration was entered in the Register, and which would not have infringed the relevant mark on a literal basis. Similarly, declared goods/services cannot be used in opposition/invalidity proceedings against a later mark which was in use or was filed before the declaration was entered in the Register, where the use would not have infringed the mark on the literal basis at that time. These defences should be borne in mind when filing the declaration but, of themselves, are not likely to mean that a declaration should not be filed.
As an alternative to filing a declaration under Article 28(8), a brand owner may file a partial surrender. Under this process, the entire class heading can be deleted and replaced with the goods and services listed in the alphabetical list (whether covered by the literal meaning or not), provided that at least one good or service is removed. This will result in a very long trade mark specification, and could present issues in relation to genuine use. In contrast, with an Article 28(8) declaration, the trade mark owner retains the class heading, but can choose to declare its intention to include other terms that are not covered by the literal meaning.
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