EU Trade Mark Owners: Article 28 declarations – have you filed yours yet?

Former Guest Kat, Darren Meale, of Simmons & Simmons, London, continues to share his thoughts about Article 28 declarations.  Over from one Darren to another...

Like this and this, this one is about Article 28 declarations. Those are the declarations you have until September 2016 to file to ensure your pre-22 June 2012 EUTMs cover all the goods and services you think they cover.

We are now halfway through the six month period the EUIPO has granted trade mark owners to file Article 28 declarations.

In that time, the EUIPO has made a few public statements on how these are going, and I have my own experience from filing a significant number of them. So here are a few pearls of wisdom, and a few of frustration, to help you along with your portfolio reviews and your declarations:

1.    More relevant to you than you think. It is surprising how some portfolio owners assume their portfolios will not be eligible for or benefit from Article 28 declarations. Experience tells me there are many more EUTMs with specifications covering entire class headings than their owners think. Remember that your registration only has to cover the class heading, it doesn’t have to have the exact wording.

2.    Plenty of declarations to come? The EUIPO has undoubtedly (optimistically) underestimated the number too. It reported in its April Alicante News newsletter than around 300 declarations had been filed in the first month, reflecting, in its view, that “affected trade mark owners have essentially understood that declarations should only be considered when there is a real interest in filing one”. In my view, the reality is that while some very well prepared EUTM owners will have filed once the window opened in March, most still have it on their to do list for the summer. We have recently filed more than 120 declarations for just one (major) portfolio owner. We also know, based on analysis we have conducted using software we have developed to automate Article 28 declarations, that there are a significant number of EUTM owners who can (if they wish) file declarations at this order of magnitude. World Wrestling Entertainment, for example, could file up to 285 declarations. El Corte Ingles, the largest department store group in Europe, could file up to 379. Intesa Sanpaolo, the Italian banking group, could file up to a massive 425.

3.    What declarants are getting wrong. Those who have filed declarations early on have frequently made mistakes, according to the EUIPO. Most of those mistakes arise from not reading the EUIPO’s guidance and a failure to understand exactly what Article 28 declarations are and what they are for. Here are the top mistakes according to the Office:

a.    Declarations containing long lists of terms clearly covered by the literal meaning of the relevant class heading. The EUIPO was very clear it would not accept these – it will only accept terms not clearly covered already. It has already published a list of “orphan” goods and services which it will accept. If a term is not in that list, you can still file a declaration, but be prepared to argue for it as and when the EUIPO issues a deficiency notice.

b.    Declarations for goods and services not contained in the Nice classification alphabetical list in force at the time of filing. The Nice classification has changed over time – make sure you are using the right one, or you’ll get a rejection.

4.    Unhelpful online form. The EUIPO is not making life easy for us all. Its online form, which it encourages us all to use, only allows a declaration for one mark at a time, which is a slow and tedious way of dealing with a large portfolio. The form is not mandatory.

5.    Too much paper. To make matters worse, even if declarations are filed together in a batch – because they all relate to one EUTM owner – the EUIPO is dealing with them all individually. So individual recordal numbers, potentially multiple examiners, individual acknowledgement letters, individual deficiency notices, individual acceptances, and so on. So if you file 100 declarations, you’ll be getting 100s of pieces of paper back. This is not how things are done for other recordals. Thanks EUIPO!

6.    Are you authorised? The EUIPO has refused to accept declarations where the filer is not the representative on file. It is often the case that EUTM owners manage their own portfolios, but instruct external counsel to correspond with the EUIPO on particular issues. This additional red tape simply adds time and cost to the whole exercise. The EUIPO tells us it is requiring this because of “the risks of our users being targeted by companies employing the sharp practice of filing declarations without their consent or authorisation in an attempt to charge for unsolicited services”. Different examiners are taking different approaches. Some require a power of attorney, some require a letter of authorisation, some require nothing. So be warned!

7.    Once a declaration is accepted. In future, it is not going to be easy to see whether or not a declaration has been filed for a particular EUTM and what was in the declaration, at least not until the EUIPO makes some updates to its database software. If you take a look at this example, which is one of the early declarations which has now been recorded, although there is a notice in the “Publications” and “Recordals” section of the EUTM’s entry, to see what’s gone on you have to log in to the EUIPO website. You can then download the EUIPO’s letter confirming recordal of the Article 28 declaration, which only shows what the entire specification looks like now. If you want to see what has actually been declared, you will have to download the TM owner’s own declaration.

Three months to go – so plenty more time – but don’t forget!