Dear Colleagues and Friends, As you surely know, on 24 December 2015, Regulation (EU) No. 2015/2424 of the European Parliament and the Council introducing important amendments to Regulation (EC) No. 207/2009 of the Council on the Community trade mark was published in the Official Journal of the European Union.This new regulation, which is part of a legislative reform package aimed to review the overall functioning of the EU trade mark system, entered into force on 23 March 2016. Several significant changes have been brought by this new regulation, but the one which is getting urgent given the close deadline (September 22nd, 2016) concerns the specification of goods/services of EU Trademarks. Indeed and as you may know, prior to the EU reform, it was a common practice to file trademarks for entire class-headings in order to cover all the products/services listed in that class. Proceeding in such manner was even recommended as it allowed to obtain the broadest possible protection for the owner of the mark. However, now, after the EU reform, full class-headings will no longer serve the same purpose as products and services that do not evidently fall under the literal meaning of the class-heading will no longer be covered by the registrations. We hence believe that an audit of your clients’ EU Trademarks is needed given that there is an opportunity to be taken to ensure a more targeted and efficient protection of your clients’ trademarks, but there is also a real risk that goods and/or services of actual interest are not adequately protected. When applicable, a declaration under Article 28(8) EUTMR can be filed with the EUIPO. The European Union trademarks have to fulfill two cumulative conditions to be considered as being eligible to this amendment: - They must be filed before 22 June 2012 and registered before the entry into force of Regulation 2015/2424 i.e. 23 March 2016;- Their specification of goods/services must comprise full class headings. How can we help you in that process? • The 1st step is to identify, among your clients’ EU trademarks, those which are eligible to this amendment declaration. It is important to note that trademark specifications that contain the entire heading of a Nice Class but are followed by some additions or precisions will not be eligible for a modification. We hence suggest to check the content of the specification of goods/services of each concerned trademark to compare it with the content of the class heading at the filing date. You could either provide us with the list of your client’s EU Trademarks or at least the number of concerned marks so that we can give you the corresponding quotation. • The second step is to check among the eligible marks which are in use whether the current specification of goods/services is sufficient or whether other goods/services should be added. • The third step would consist in filing the amendment declaration with the EUIPO and follow-up the file with the Examiner who will appreciate the acceptable character of the requested amendment. Please note that our fees for each of the described steps will depend on the number of concerned marks. As mentioned above, the deadline to file this declaration with the EUIPO expires on September 22nd, 2016. Please feel free to contact us should you have any question. Thanks and best regards,Meriem LOUDIYI 5 rue Feydeau75002 ParisFRANCE This email was sent to vinh@bross.vn why did I get this? unsubscribe from this list update subscription preferences Inlex Africa • Immeuble le Lamido • Boulevard du Lamido de Rey Bouba Mballa 2 • Yaounde 0000 • Cameroon
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