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 European Union Intellectual Property Office (EUIPO).

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 EUIPO.

How do I file a declaration?

Declarations must be filed directly with EUIPO, 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 EUIPO 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.

More questions?