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Reminder: EU TM Article 28(8) deadline is 24 September

18-09-2016

Following recent changes to EU trademark legislation, holders of European trademark (EU TM) registrations, filed prior to 22 June 2012, have until 24 September to file Article 28(8) declarations to preserve the scope of protection of their affected rights.

As you may be aware, recent changes to EU trademark legislation may limit the scope of protection of EU TM registrations filed prior to 22 June 2012. Owners of affected EU TMs have the opportunity to amend their registrations to preserve the scope of protection as intended on the date of filing. To do this, an Article 28(8) declaration must be filed by 24 September 2016. Please speak to your trademark attorney as soon as possible to ensure necessary declarations are filed in good time.

What do you need to do?

  • Review your portfolio of EU TM registrations filed before 22 June 2012 [NB: We have recently emailed our clients with a link to the full list of EU TMs that we hold on their behalves. Please contact us if you did not receive this email].
  • Review the terms in the goods and services description for each of those EU TMs on filing, to assess whether the goods and services that are relevant for your business are clearly covered by those terms.
  • Assess whether the goods and services for which the EU TMs are used fall under the ‘literal’ meaning of those class headings.
  • If the goods and services do not fall under the literal meaning, you will need to file an Article 28(8) declaration (for each affected right).

Please note that an Article 28(8) declaration can only be made when the entire class heading is used in the goods and services description, i.e. the entire class heading and additional goods or services provided that do not limit the class heading (if any).

Unsure of what to do?
If you are unsure whether your rights are impacted by the changes or need additional advice on the need to file an Article 28(8) declaration, please contact us.

Please act now: Article 28(8) declarations must be filed by the September deadline. There is no extension period. Please review your rights today or contact us for additional assistance.