Issue 062
  February 2016
Contents:
 

Presidential Communication on Article 28(8)

>  
 

Coexistence agreement workshop in Poland

>  
 

Field notes from the Outer Borders

>  
 

Arbitrating and mediating trade marks

>  
 

Unlock the benefits of IP Key

>  
 

Survey on IPR in third countries

>  
 

Speaking Freely: Brands, Art, Public Policy & Genericide

>  
 

Bags, luggage, jewellery and watches reports published

>  
 

DesignEuropa awards launched

>  
 

Enforcement Database Forum

>  
 

Reminder on IRs designating United States

>  
 

MARQUES Media Roundup

>  
 
Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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Presidential Communication on Article 28(8)

 

OHIM has clarified how it will implement Article 28 EUTMR, providing guidance on filing declarations regarding the specification of goods and services. Robert Guthrie explains


As mentioned in last month's HouseMARQUES, Article 28(8) of the Amended European Union Trade Mark Regulation provides for a six-month window during which owners of EU trade marks filed before 22nd June 2012 - and registered prior to the entry into force of the Amending Regulation No 2015/2424 on 23rd March 2016 - and which cover one or more Nice class headings can file declarations confirming that their intention at the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the class heading.

The Office has now issued a Presidential Communication on the implementation of Article 28 EUTMR, as well as an accompanying FAQ document and Annex. In particular, the communication provides some guidance on the Office's interpretation of Article 28(8) and sets out the procedures under which trade mark owners and their representatives can file Article 28(8) declarations.

MARQUES' European Trade Mark Law and Practice team provided the Office with a number of comments on an initial draft of the communication and pleasingly most of these comments have been taken on board by the Office.

Key points

Some key points to bring to the attention of MARQUES members are:

  • The Office has created a specific online form for Article 28(8) declarations which can be used for EU trade marks.
  • The Office has provided guidance on which goods and services can be included in Article 28(8) declarations. In particular, it has confirmed that it will object to the following: 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 force at the date of filing.
  • The Office has set out in an Annex a list of the goods and services in the various versions of the Nice alphabetical list which it considers are clearly not covered by the literal meaning of the headings and which it will therefore not object to on the grounds that they are clearly covered by the relevant class heading. This Annex is a useful guide for trade mark owners as to which goods and services they will be able to cover in their Article 28(8) declarations. However, it should be stressed that there may be alphabetical list terms which have not been included in the Office's Annex but which it would also accept on the basis that it is not clear whether or not those terms are covered by the relevant class heading.
  • The communication confirms that Article 28(8) does apply to EU designations of International Registrations. An earlier draft of the Communication had suggested that Article 28(8) would not apply to IRs but OHIM's position on this issue has changed following representations from WIPO, MARQUES and others. WIPO has issued its own Information Notice, which confirms how it will handle the changes to the EU designation of IRs in accordance with Article 28(8). The same conditions mentioned in the first paragraph above will also apply to EU designations.

 

 

Robert Guthrie is a Partner of Osborne Clarke and Chair of the MARQUES European Trade Mark Law and Practice Team

 

Coexistence agreement workshop in Poland

 

The latest MARQUES Coexistence Agreement Workshop was held in Warsaw, Poland on 18th February

Read More >>
Field notes from the Outer Borders

 

The IP Outer Borders Team’s latest field note is on …

a field!

Read More >>
Arbitrating and mediating trade marks

MARQUES is hosting an event on arbitrating and mediating trade marks in London on 19th April 2016

Read More >>

Unlock the benefits of IP Key

 

Survey on IPR in third countries

IP Key has recently updated the Roadmap on trade mark protection in China, taking into account recent changes in the legislation

 

MARQUES members are invited to participate in the forthcoming survey on enforcing IP rights in third countries, which launches on 1st March

Read More >>   Read More >>
Speaking Freely: Brands, Art, Public Policy & Genericide

The first article in the IP Outer Borders Team’s series on topical branding issues looks at public engagement with brands, and the clash between trade mark rights and freedom of expression

Read More >>
Bags, luggage, jewellery and watches reports published

 

 


The Observatory on Infringements of Intellectual Property Rights, based at OHIM in Alicante, has published two more reports on the economic cost of IPR infringement

Read More >>

DesignEuropa awards launched

 

Enforcement Database Forum

 

 

 

 

The new DesignEuropa awards, to be held in November this year in Milan, will celebrate excellence in design and design management among RCD owners

 

The Enforcement Database (EDB) Forum 2016 will take place at OHIM in Alicante on 28th and 29th June

Read More >>   Read More >>

Reminder on IRs designating United States

 

MARQUES Media Roundup

WIPO recently published the following Madrid Information Notice regarding international registrations designating the United States

 

Catch up on all the trade mark and design news and analysis on the MARQUES blogs and social media channels. Here are some recent highlights

Read More >>   Read More >>

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