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May 12, 2016 About the EUIPO
Declarations under Article 28(8)
Article 28(8) EUTMR, amended by Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation, allows for a transitional period of six months during which proprietors of EUTMs applied for before 22 June 2012 and 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 and services beyond those covered by the literal meaning of that heading.
In essence, this means that from the end of the transitional period, all trade marks containing class headings will be interpreted according to their literal meaning regardless of their filing date.
As a result, the Executive Director of EUIPO issued a Communication on February 15, 2016, setting the framework for proceedings before the Office for entering a declaration under Article 28(8) EUTMR in the Register.
The Annex to Communication 1/2016 of the Executive Director concerning the implementation of Article 28 EUTMR contains a non-exhaustive list of examples of goods and services clearly not covered by the literal meaning of the general indications of the Nice class headings for each of the editions of the Nice classification concerned (6th to 10th edition).
As a result of feedback from users, the Office has prepared a non-exhaustive list of terms considered to be not clearly covered by the literal meaning of the respective class headings for the purpose of declarations under Article 28(8) EUTMR. The list is purely for the guidance of trade mark owners wishing to submit declarations for the purposes of Article 28(8) EUTMR. The list is available here
When making a declaration:
The Office has created an online form for declarations, accessible through the User Area of its website.
When making a declaration, users are kindly reminded that, as mentioned in paragraph 8 of Communication 1/2016, the Office will object to:
- claims for the entire alphabetical list;
- the use of unclear, imprecise or unspecific expressions;
- declarations for goods and services that are clearly covered by the literal meaning of the class heading;
- declarations for goods or services not contained in the alphabetical list in question.
The following check-list may serve to help users avoid receiving an office objection, by verifying the requirements before filing their Article 28(8) declarations:
- Declaration filed before 24/09/2016
- Correct language (Office language for EUTMs, language of the IR for IRs designating the EU)
- Representative appointed where necessary
- Mark identified
- Owner identified
Regarding the mark
- EUTM filed before 22/06/2012
- EUTM registered
- EUTM covers entire class heading
Regarding the content of the declaration
- Identifies goods and services that go beyond the literal meaning of the class heading and
- Identifies goods and services that appear on the alphabetical list in force at the time of filing the EUTM.
Users are also kindly reminded that, in accordance with paragraph 8 of Communication 1/2016, declarations for any of the goods or services included in the Annex of examples of terms clearly not covered by the literal meaning of the respective class headings will not be objected to by the Office on the ground of being covered by the literal meaning of the class heading.