Get ready to boost your EU trade mark portfolio - you will only have one chance

Trade mark owners will soon be given a six month, one off window to bolster the scope of their pre-June 2012 Community trade mark portfolios by making an “Article 28” declaration to the EUIPO. Find out why you should be thinking about this now.

Trade mark owners will soon be given a six month, one off window to bolster the scope of their pre-June 2012 Community trade mark (CTM) portfolios by making an “Article 28” declaration to the EU Intellectual Property Office (the EUIPO, still called OHIM until March this year) regarding the goods and services covered by their registrations. If they do not, those registrations may forever thereafter be limited and no longer cover goods and services which owners previously thought they did.

What is the EUIPO doing to CTM portfolios?

In 2012, the Court of Justice of the EU gave a decision in a case called “IP Translator”. In short, the fallout from that decision led to a change in the way OHIM interprets the scope of the monopoly claimed by a CTM where that CTM uses what are called the “class headings” of the Nice Classification. Prior to 2012, CTM applicants and their advisors often used class headings as an abbreviated way of claiming a broad monopoly. So, as but one example, specifying “musical instruments” under Class 15 would then be taken by OHIM to mean that the CTM covers all of the possible goods in that class under the Nice Classification, including all types of musical instruments and their accessories.

As of this year, the rebranded EUIPO will no longer take that approach. Instead, it will confine CTMs that contain class headings to the literal meaning of the words in the class heading. If a product or service is not included in the literal meaning of those words (in the opinion of the EUIPO), the CTM will not cover that product or service. It is quite likely that this change in practice will be permanent.

How should you respond?

The change in practice should not be ignored. It is an exceptional, one off change in approach which has a potentially serious impact for every CTM owner. Other than taking no action - which we would not advise - there are two real alternatives to addressing this matter:

A. Make an Article 28 declaration

In recognition of the impact of this change in practice, the Office is opening a one off, time limited window between March and September of this year in which CTM owners can file a declaration setting out additional goods and services not covered by the literal meaning of class headings used in their registrations. Those additional goods and services will then be added to the specifications of those registrations and bolster the future protection provided by them.

If no declaration is filed, the effect will be that all relevant marks will be automatically limited to cover only the literal meaning of the words in the class heading.

B. Make an Article 50 part-surrender

It is always open to CTM owners to surrender part of their trade mark by deleting particular goods and services from a specification. This power can be utilised where the specification covers an entire class heading to delete that heading and replace it with the full alphabetical list of goods and services listed in the relevant Nice Classification for that class, less one type of good or service (as otherwise nothing has been surrendered).

If there might have been doubts as to whether a good or service was covered by the literal meaning of the words in the class heading, this method, like an Article 28 declaration, can overcome the doubt by expressly adding the good or service in question.

Both methods achieve, in different way, a similar outcome - the aim of which is to ensure that CTMs remain registered for as broad a scope of goods and services as possible, and are not negatively affected by the EUIPO’s new practice.

While some advisors have already published their recommendations, these are based on the EUIPO’s draft mechanics for dealing with Article 28 declarations (which have thus far only been released on a confidential basis to user groups). These are subject to change, and a number of significant comments have been made concerning them by organisations including WIPO, MARQUES and others.

At present, it is worth considering at least the following points:

  • Neither approach requires payment of an official fee.
  • Additional goods and services added by an Article 28 declaration will be subject to certain defences if CTM owners try to assert their marks against third parties who have made prior uses, ie, if your declaration broadens your monopoly you cannot assert it against a use which predates the declaration. It would not appear that these defences apply to partial surrenders.
  • Article 28 declarations involve retaining the class heading and adding additional goods and services, albeit the EUIPO is looking to keep the possible additions to a narrow list. Partial surrenders involve deleting the class heading and replacing it with a (very) long list of goods and services.
  • Either approach could create new arguments in any non-use attack on a mark. Whilst it could be useful in some circumstances, a partial surrender may also be more likely to create a list of goods and services which is more vulnerable in any non-use revocation action, because a long list of goods and services is, in our view, easier for a court or the EUIPO to cross through and limit down to only the precise goods for which use can be proved, whereas this is perhaps harder to do where class heading wording remains in place.

Our present view is that the final point on non-use means that partial surrenders are likely to be a more risky option, so Article 28 declarations should generally be preferred.

However, we suggest CTM owners wait until the EUIPO confirms its final implementation plans for Article 28 declarations before committing to either approach. This is a matter which all mark owners should have firmly on their radars to resolve in the first half of this year, but taking action right now would be premature.

We will update you once the EUIPO has committed to its approach. If you wish to discuss this topic further in the meantime, please contact Darren Meale.

This document (and any information accessed through links in this document) is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.