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Translating IP Translator and Article 28 outside Europe


29th Feb 2016

Owners of international trade mark registrations with an EU designation who have relied on a Nice Class heading to define the scope of protection should take action urgently.

A new European Union Trade Mark Regulation comes into force on 23 March 2016. Article 28 of that Regulation provides a one-time-only opportunity (until 24 September 2016) for proprietors of existing Community marks to submit declarations clarifying their scope of protection in light of the 2012 decision of the CJEU in the IP Translator case.

Article 28 applies not only to Community marks filed directly with OHIM but also to designations of the Community in international registrations filed under the Madrid Protocol. For the proprietors of this latter category of mark, there may be particular problems.

The new Regulation has spawned a minor industry in Europe monitoring, reporting and assessing the effect of the new Regulation on thousands of existing Community registrations. However, outside Europe, it may be that the effect of Article 28 has not come to the attention of trade mark owners or has not been fully understood. Many of those trade mark owners do not have professional trade mark attorney representation within the Community because one of the bonuses of the Madrid Protocol is that there is no need to appoint a local attorney where registration is straightforward – and what could be more straightforward than an application filed using the class heading to define the scope of the protection?

One unforeseen consequence of Article 28 seems likely to be that some of those with the greatest need to review the scope of their Community rights may not even know that there is an issue to be considered.

If you hold an international registration designating the EU and rely on the Nice Class heading for the scope of protection, please contact us. We will be reviewing cases currently handled by us and will be in touch with those clients who are affected by this aspect of the Regulation.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Helen Wakerley
Partner
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