Chance to Clarify Scope of International Registrations Designating the EU
February 16, 2016
If you are the holder of an international registration with an EU designation in force prior to June 22, 2012, and you relied on a NICE Class heading to define the scope of protection, it is in your interest to consider clarifying this scope before The Office for Harmonization in the Internal Market (OHIM).
A decision not to take advantage of this opportunity may mean that your scope of protection in the EU will be limited to the literal meaning of the NICE Class heading only.
In line with the provisions of Article 28(8) European Union Trade Mark Regulation (EUTMR), you have until September 24, 2016 to clarify the goods and services that fall outside the literal meaning of a NICE Class heading, through a declaration submitted to OHIM.
How do I file a declaration?
Declarations must be filed directly with OHIM, in the language of the international application, using the Recordal Application Form. Modalities for filing the declaration are detailed in Communication No.1/2016 of the President of OHIM (the Communication). Declarations must not be filed with WIPO.
What is the timeframe for submitting a declaration?
Declarations should be submitted between March 23 and September 24, 2016, inclusive.
Will WIPO publish information concerning the declaration?
Where OHIM finds that declarations comply with the requirements of Article 28(8) EUTMR and the Communication, it will provide WIPO with a statement for each international registration concerned. WIPO will publish relevant information in Madrid System information products, including the WIPO Gazette of International Marks and in the ROMARIN database.
- Read Information Notice No. 10/2016
- Consult Communication No.1/2016 of the President of OHIM
- Annex I of the Communication: Examples of terms clearly not covered by the literal meaning of the respective class headings
- Browse OHIM Frequently Asked Questions on Article 28(8) EUTMR
- View recording of the OHIM webinar on the new European Union trade mark Regulation
- Contact OHIM or Madrid Customer Service