The EU Trade Marks Change
Article 28 Declarations
The new EU Trade Mark Regulation came into force on 23 March 2016, bringing with it numerous changes to the EU trade mark system, one of the major changes being the way the OHIM – now the European Union Intellectual Property Office (“EUIPO”) – handles the classification of goods and services.
Historically, the position of OHIM was that trade marks registered for class headings were deemed to cover all goods and services in the class concerned. The first part of new Article 28(8) reads as follows:
Article 28(8): Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.
The purpose of the expansion of this Article is to ensure that the goods and services in each Trade Mark registration are defined with sufficient clarity to enable the scope of protection to be determined. The specification will be given its literal meaning (and nothing broader).
A Communication has been issued by the President on the Implementation of Article 28 explaining exactly how the EUIPO will implement Article 28(8).
What does this change to the Regulation actually mean for trade mark holders?
Holders of Community Trade Marks (“CTM”) will need to check the specifications of their marks to see whether they cover the exact wording of the class headings that were in force at the time of filing. If the specification does not cover the class heading, but covers the specific goods or services of interest to the holder, then no action is needed. If the specification covers the class heading, and the goods or services for which the mark is used are adequately described by the terms included in the class heading, then no action is needed. It only becomes necessary to take action in cases where the specification covers the wording of the class heading, and the goods or services in relation to which the trade mark owner uses the mark falloutsidethe literal meaning of the terms in the specification. This is best illustrated by way of example.
Imagine that a CTM was filed in 2002 and was classified according to the 8th version of the NICE classification which was in force at the time the mark was filed, and covered the Class 25 class heading. According to current procedure at OHIM, the trade mark would be considered to cover all goods in Class 25. The new Regulation means that listing the class heading no longer provides protection for all goods in the class, and instead the mark will now only be deemed to provide protection for goods which are clearly covered by the literal meaning of the terms that are listed. Crucially, if the goods or services offered under the trade mark are clearly covered by the literal meaning of the terms listed, the trade mark holder needs to take no action. If our CTM that was filed in 2002 is used in relation to t-shirts, sandals and bobble hats, an Article 28(8) Declaration does not need to be filed, because these goods are clearly covered by the literal meaning of ‘clothing, footwear, headgear’. If, on the other hand, our CTM that was filed in 2002 is used in relation to ‘studs for football boots’, these would not be deemed to be covered by the literal meaning of the terms within the class heading. The term ‘studs for football boots’ is included in the alphabetical list of goods that was in force at the time of filing the application and therefore an Article 28(8) Declaration would need to be filed to claim protection for these goods.
Further issues that trade mark holders may face when deciding whether or not it is necessary to file an Article 28(8) Declaration include:
- What if the trade mark covers the class heading plus some extra terms?
In this situation it would be possible to file a Declaration if protection is sought for terms that are not covered by the literal meaning of the words in the class heading or the additional terms listed in the specification.
- What if the trade mark covers the class heading, but the class heading is subject to a disclaimer?
In this situation it would not be possible to file a Declaration. Declarations can only be filed if the specification covers theentireclass heading in force at the time of filing. Wording such as ‘none of the aforesaid goods relating to ……’ at the end of a class heading would disqualify a specification from being the subject of an Article 28(8) Declaration, as would the inclusion of the word ‘namely’ when it is used to particularize a list of goods or services. Use of the phrase ‘in particular’ as part of a class heading is not considered to be a disclaimer, and specifications containing the phrase ‘in particular’ can be the subject of an Article 28(8) Declaration.
- What if the trade mark covers some of the terms from the class heading, but not the entire class heading?
Article 28(8) Declarations can only be filed where a trade mark covers anentireclass heading. If only some but not all terms from the class heading are covered, it is not possible to file an Article 28(8) Declaration.
What terms can be included in an Article 28(8) Declaration?
When filing the Article 28(8) Declaration, it is important to remember that its purpose is to ensure that the resulting specification is clear and precise. It is not an opportunity to expand the scope of protection for an existing CTM, and a Declaration that attempts to broaden the scope of protection of the mark will be refused. Simply filing a Declaration listing all of the goods in the relevant alphabetical list will also result in the Declaration being refused.
One way the EUIPO is ensuring that specifications cannot be broadened as a result of filing an Article 28(8) Declaration is by stipulating that only terms listed in the alphabetical list of the NICE classification in force at the date on which the application was filed can be used in the Declaration. If a good or service is not included in the alphabetical list in question, it will not be possible to include it in a Declaration, and attempting to include such a term will result in the Declaration being refused. This will be applicable to trade marks registered in Class 35 that cover the class heading, but where the trade mark owner wanted to obtain protection for the term ‘retail services’. The class 35 heading is ‘Advertising; business management; business administration; office functions’, and the term ‘retail services’ is not considered to be covered by the literal meaning of this class heading. The term ‘retail services’ is not included in the alphabetical list of goods and services and current advice from OHIM for trade mark owners who filed for the Class 35 heading with the intention of obtaining protection for retail services is to file a new trade mark application.
There will be other instances where terms that are required are not included in the alphabetical list and in these instances it will be down to the EUIPO to decide whether a term can be included in the Declaration on a case by case basis. Should your Declaration be refused, you will of course have the opportunity to appeal the decision.
Are Article 28(8) Declarations automatically accepted?
Article 28(8) Declarations will be examined by the EUPIO. The guidelines issued by the EUIPO made clear that they will object to:
- claims for the entire alphabetical list in a class
- use of unclear, imprecise or unspecific terms
- claims for good or services that are clearly covered by the literal meaning of the class heading
- claims for goods or services not falling in the alphabetical lists for the class in question
In relation to the third point, for example, if an EUTM was filed in Class 15 for the class heading, namely ‘Musical instruments’, and the owner filed a Declaration to say that they wanted the specification amended to add ‘violins; violas; cellos’, the EUIPO would reject the Declaration because these terms are already covered by the literal meaning of the term ‘Musical instruments’. However, if the owner sells ‘music stands’ under the trade mark, it would be necessary to file a Declaration, because ‘music stands’ are not covered by the literal meaning of ‘Musical instruments’, but are included in the alphabetical list and would have been deemed to have been covered by the old ‘class heading covers all’ stance previously adopted by the OHIM.
The Procedure for filing an Article 28(8) Declaration
An online recordal form is available on the EUIPO’s website to allow trade mark owners or their representatives to file Article 28(8) Declarations on line. The online form will not be made available for EUTM’s which have been designated through WIPO as part of an International Registration, and for these marks it will be necessary to complete a Declaration on a paper form.
The 6 month period during which an Article 28 Declaration can be filed runs until 24 September 2016 and isnotextendible. As far as we are aware, the EUIPO is not currently intending to make direct contact with owners of EUTM’s filed before 22 June 2012 to inform them of the possibility of filing such a Declaration. If the specification of a mark covers a class heading and if no Declaration is filed, the literal meaning of each term in the class heading will apply from 24 September 2016.
We are reviewing all of our client’s CTMs filed before 22 June 2012 which contain class headings and will be contacting the owners of affected registrations to see whether they wish to file an Article 28(8) Declaration if appropriate before 24 September 2016. Filing an Article 28(8) Declaration will not incur any official fees, and we will be providing our clients with an estimate of our fees, which will depend on the marks involved.