Article 28(8) Declarations – The final countdown…..

The statutory deadline of 24 September 2016 for the filing of a declaration under Article 28(8) of the amended EU Trade Mark Regulation (“EUTMR”) is fast approaching. This deadline cannot be extended.

Our previous guidance note on specifications and in particular Article 28(8) EUTMR declarations can be found here.
By way of a recap, up until June 2012, the EUIPO’s practice, confirmed by Presidential Communication 4/03 (here), was to consider that full class headings in any given class were to be read as covering “all goods / services” in that class. The Court of Justice, in its 19 June 2012 judgment called IP TRANSLATOR (here), said that specifications had to be clear and precise, and that only goods or services covered by the literal meaning of the terms used were covered by trademark registrations. The EUIPO reacted by issuing Communication 2/12, which entered into force on 21 June 2012 (here) and repealed the earlier Presidential Communication.

The Regulation, under Article 28(8), provides for the possibility to amend EU trademarks that were filed before 22 June 2012 indicating full class headings based on the former practice. After the 24 September 2016 – the deadline for filing declarations under Article 28(8) EUTMR – the specifications of all EUTMs, regardless of time of filing, will be interpreted on the basis of “means-what-it says”.

The EUIPO is expecting a large volume of declarations to be filed in the run up to the 24 September 2016 deadline. The number as of 20 September 2016 is 11,500 – many of which have been filed very recently. This will result in an inevitable delay in the review and processing of the declarations. From recent discussions with the EUIPO it is likely to be January 2017 before details are published on the EUIPO online record.

If you have a EUTM eligible for a Declaration under Article 28(8) EUTMR and are not certain that it covers the products you need it to cover, please – once again – do not hesitate to contact us for guidance and assistance. There are only three days to go!