New EU Trademark Regulation: Communication of the President of the OHIM on the application of Article 28(8)

Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union. The Amending Regulation will enter into force on 23 March 2016.

From that day, the Office for Harmonization in the Internal Market (OHIM) will be called the European Union Intellectual Property Office (EUIPO) and the Community trade mark will be called the European Union trade mark.

According to article 28(8) of this Amending Regulation, owners of EU trade marks filed prior to 22 June 2012, and registered before 23 March 2016 for the entire heading of a Nice class may declare, by no later than 24 September 2016, that their intent at the time of filing their mark was to seek protection in respect of goods or services (to be listed) beyond those covered by the literal meaning of the class heading, provided they are included in the alphabetical list for that class in the edition of the Nice Classification in force at the time of initial filing.

This article reverses the communication No. 2/12 of 20 June 2012 of the President of the OHIM (issued following the IP TRANSLATOR judgment rendered by the CJEU), which considered that class headings could cover the entirety of the goods or services of said class, even when they were not expressly mentioned in the mark’s list of items.

Failure to submit the declaration for a trademark within the allotted deadline will result in this mark being considered as designating only those goods and/or services, within the literal meaning of the class heading at issue.

While it has never been Cabinet DEGRET’s policy to file trademarks that designate only class headings but with intent to protect other goods within said classes, your trademark portfolio may include marks that were not filed through our firm.

That is why we invite you to contact us without delay so we may attend to a careful review of your trademarks and to take advantage of this opportunity to file the above-mentioned declaration.

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