The PNP Bimonthly

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Trademarks in the EU:
most recent developments.

Brand owners of European Union trade marks (with the former name Community trade marks) and trade marks with an international registration designating the European Union, are entitled in the period from 23.03.2016 until 24.09.2016 to file a declaration under Art. 28, para. 8 of the new Regulation (EU) 2015/2424 of the European Parliament and the Council.

On 16.12.2015 the European Parliament adopted a new regulation – Regulation (EU) 2015/2424 of the European Parliament and the Council, which amended the old Regulation (EC) 207/2009 on the Community trade mark and a number of other acts.

The new regulation entered into force on the 23.03.2016.

Before the entry into force of the new regulation in relation to trade marks that have been applied for registration before 22.06.2012 in respect of the whole heading of the relevant class of the Nice Classification, it was assumed that such trade marks provide legal protection in recpect to all goods or services included in the alphabetical list of goods or services of the respective class, i.e. the class headings in respect of these brands were interpreted extensive (broadly), not restrictive (literally).

After the entry into force of the new regulation, the headings of the classes of goods or services of the Nice Classification will be interpreted in terms of all trade marks restrictive (literally). This means that they will include only those goods or services, which are covered by the literal meaning of the terms included in the heading of the respective class. Therefore, the owners of European Union trade marks, respectively of trade marks with an international registration designating the European Union, which were filed or designated for registration before 22.06.2012 and which are registered on or before 22.03.2016 for the whole heading of the relevant class of the Nice classification, are entitled in the period from 23.03.2016 until 24.09.2016 to file a declaration under Art. 28, para. 8 of the new Regulation, declaring that their intention on the date of filing the application for registration, respectively the application for international registration or territorial designation under the Madrid system, had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the terms included in the heading of the respective class.

For example, if you own an European Union trade mark for these services – “transport; packaging and storage of goods; travel arrangement”(i.e. the whole heading of Class 39), and you offer and brand with your trade mark only services of rental of diving suits, which are not included in the heading of class 39, you shall file a declaration under the new regulation until 24.09.2016, which explicitly state that at the time of filing the application for registration of your trade mark your intention had been to seek protection in respect of services beyond those covered by the literal meaning of the terms included in the heading of Class 39, namely, in your class – for rental of diving suits. Based on the submitted by you declaration the services of rental of diving suits will be added to the above listed services, included in the heading of Class 39.

However, if your trade mark is registered for the following services – ” transport; packaging and storage of goods; travel arrangement; rental of diving suits “( i.e. the whole heading of Class 39 plus rental of diving suits) and you offer and brand with your trade mark only services of rental of diving suits, you are not required to file declaration under the new regulation.

Goods or services listed in the declaration filed under the new regulation need to be included in the alphabetical list of goods or services of the respective class in the relevant edition of the Nice Classification, which was in force at the time of filing the application for registration of your European Union trade mark, respectively filing the application for international registration or territorial designation under the Madrid system.

In case within the six months term – from 23.03.2016 until 24.09.2016, the owners of the affected European Union trade marks, respectively trade marks with an international registration designating the European Union, fail to submit a declaration under Art. 28, para. 8 of the new regulation after the 24.09.2016 it will be interpreted that their trade marks provide protection only in respect to those goods or services, which are covered by the literal meaning of the terms included in the heading of the respective class.

The deadline for filing declarations under Art. 28, para. 8 of the new regulation is preclusive! This means that it cannot be extended.

Declarations under Art. 28, para. 8 of the new regulation should be submitted in one of the five official languages of the European Union Intellectual Property Office (formerly Office for Harmonization in the Internal Market), namely: English, German, French, Italian or Spanish.

The submission and the processing of the declarations under the new regulation are free of charge and the declarants do not owe fees in favor of the European Union Intellectual Property Office. In this context, brand owners should be warned about the recent cases of fraud by unscrupulous individuals who try to deceive brand owners in order to profit at their expense.

Finally, it should be noted that Art. 28, para. 8 of the new regulation does not apply to applications for registration of European Union trade marks and trade marks with an international registration designating the European Union, filed on or after 22.06.2012, as well as those which have been filed on or before 21.06.2012, but are still not registered by the 23.03.2016.

In case you wish to submit a declaration under Article 28, para. 8 of the new regulation it is advisable to contact a professional. Lawyer Andon Nastev is a registered European industrial property representative and will gladly advise and assist you.