"IP Translator" declarations must be filed before 24 September 2016

"IP Translator" declarations must be filed before 24 September 2016

This affects owners of EUTMs (formerly known as Community Trade Marks) applied for before 22 June 2012. If the specification of goods/services covers an entire NICE class heading then it may be necessary to file a declaration amending the specification now. If in doubt, contact your trade mark agent – you are also welcome to contact us to discuss.

In June 2012, in its IP TRANSLATOR decision, the Court of Justice of the European Union  cut down the goods/services covered by certain trade marks, where the NICE Classification headings had been used in the specification. This represented a change in approach.  The EUIPO (formerly known as OHIM) approach at the time had been to regard these NICE headings as importing the whole of the long list of goods/services included in the relevant class into the specification. The CJEU said this was wrong - the headings were to be read literally.  In some cases this resulted in trade mark owners losing coverage for important goods/services. Such trade mark owners now have an opportunity to fill in the gaps by filing a declaration under Article 28 of the new EUTM Regulation (an Article 28 declaration). This must, however, be filed before 24 September 2016.

The EUIPO’s press release explains more.

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