According to Article 28, Paragraph 8 of the new Regulation (EU) 2015/2424 of the European Parliament and the Council, proprietors of Community trademarks applied for before June 22, 2012, and which are registered in respect of the entire heading of a Nice class may declare by September 24, 2016, that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.
What conditions should be met in order declaration under Art. 28, paragraph 8 of Regulation (EU) 2015/2424 to be upheld?
1. The application for Community trademark registration should have been submitted before June 22, 2012.
2. The Community trademark should have been registered in respect of the entire heading of a Nice class.
3. The goods and services in the declaration should be beyond those covered by the literal meaning of the heading of that class.
4. The goods and services in the declaration should be included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.
5. The declaration should be filled in one of the five official languages of OHIM, namely: English, German, Italian, French or Spanish.
6. The period for submission of the declarations is from March 23, 2016, until September 24, 2016.
It is important to note that the deadline cannot be extended, which means that, after September 24, 2016, the Office will not accept declarations under Art. 28, paragraph 8 of Regulation (EU) 2015/2424. The Office will take the necessary measures to amend the Register accordingly as well as publish the changes in the Bulletin. The Office will not charge the proprietors of Community trademarks for the records under Article 28, Paragraph 8. Proprietors of Community trademarks may authorize a professional representative to fill and file the declaration.
What are the consequences if no declaration under Art. 28, paragraph 8 of Regulation (EU) 2015/2424 is filed? For which goods and services will my trademark be registered if I do not file a declaration under Art. 28, paragraph 8?
Community trademarks for which no declaration is filed within the period between March 23, 2016, and September 24, 2016, shall be deemed to extend, as from the expiry of this period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class. Finally, it is also important to note that under current practice, Community trademarks, that are filed on or before June 21, 2012, and which are registered in respect of the entire heading of a Nice class are interpreted as covering all the goods and/ or services included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. After the entry into force of the Regulation (EU) 2015/2424, if within the above specified period, no declaration is filed under Article 28, Paragraph 8, then after the expiry of the period, the Community trademarks shall be deemed to extend only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class. This period in which the proprietors of Community trademarks applied for before June 22, 2012, can file a declaration is an opportunity to clarify the exact scope of their goods or services.
If you would like to file a declaration under Article 28, Paragraph 8 of Regulation (EU) 2015/2424, you are advised to contact a European Trademark Attorney for professional advice. The Bulgarian IP specialist Krasimira Kadieva will gladly assist you with the submission of the declaration under Article 28, Paragraph 8 of Regulation (EU) 2015/2424 as she has acquainted herself with all the materials posted on the website of OHIM regarding this declaration as well as participated in a webinar organized by OHIM on February 2, 2016, where the procedure was discussed.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide information about declarations under Article 28, Paragraph 8 of Regulation (EU) 2015/2424. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The Bulgarian IP specialist Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.