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.
Tom Lingard