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

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