Filed your Article 28 declarations? You may have to do them all over again…

Former Guest Kat, Darren Meale, of Simmons & Simmons, London, provides another update to the ever-changing landscape of Article 28 declarations. Previous instalments can be found here, here and here.

I can only apologise in having to write again on this subject, but the EUIPO has recently moved the goalposts on Article 28 and everyone who has reviewed portfolios and filed Article 28 declarations may need to redo the job because the EUIPO has, nearly four out of six months into the window for declarations, released a new list of “orphan” goods and services.

The EUIPO, at it again...

The problem is this. Article 28 declarations may only feature goods and services not covered by the literal meaning of the Nice class heading to which they relate. When it released its Communication back in February, the EUIPO took an approach designed (in my view) to minimise the number of declarations it would receive. Its approach was to make clear that it would not accept declarations for goods and services which were covered by the literal meaning of the class heading, so one would need to be specific. To assist, it published a list of goods and services it considered were “not covered” – what I’ve been calling “orphans”. To come up with that list, it would have had to review 45 lists of alphabetical goods and services across five versions of Nice, so a hefty job. The list of orphans was only stated to be examples, but the implication was clearly this: we, the EUIPO, have decided what we think the orphans are, so if you file for something else, be prepared to argue with us over it.

In its FAQ, published along with the Communication, the EUIPO softened its approach and said it would accept goods and services where there is “reasonable doubt”. Nevertheless, I don’t expect many practitioners wanted to plod through the lists trying to find suitable candidates when the EUIPO had, ostensibly at least, already done the job.

I expect that many of you went away and advised clients on this rather technical and time-consuming exercise that where the EUIPO haven’t identified any orphans, it might not be worth the time and effort to review the Nice alphabetical lists and try to argue that they have missed something (nearly 1,500 orphans have now been spotted buried within many thousands more non-orphans). You may also have taken the list of orphans and used it as a guide to help you and clients decide what to file for (and what not to file for) in your declarations.

The EUIPO has now lobbed a grenade. On 4 July, it issued a Notice detailing a new list of orphans. This list does not mention the original list and it is presented in a completely different format. It is stated to provide “Examples of terms either clearly not covered, or not clearly covered” by the literal meaning of the class headings. It has apparently been created by the Office “Following feedback from its user community”.

There are a significant number of changes. In the original list, there were no orphans in classes 6, 17, 23, 27, 32, 34, 36, 38, 42, 43 and 45. One might sensibly have concluded that if your portfolio primarily covers these classes, you need not bother filing declarations. In the new list, there are orphans in every class apart from classes 23 and 32. There were previously three orphans in class 35, there are now 30. And so on.

If you have relied upon the EUIPO’s original list of examples, you may need to look again. If you have already filed declarations, you may need to file new ones – or supplemental ones. Given the work involved in manual review, this may be an expensive and frustrating task. We have been doing this using our own automation software and can re-run our analysis using the new list – but this list, coming more than half of the way through the six month window, is likely to be hugely unwelcome to all.

We have sought comment from the EUIPO, who tell us that no further lists are planned. They also confirm that several declarations may be filed for the same mark, or any declarations already filed can be withdrawn and then re-filed.

Beware that this change will not to lead to an extension of the time limit, which is in the new EUTM Regulation, and not a matter in which the EUIPO has any discretion. It is very unlikely indeed that an amendment to the EUTM Regulation could be passed prior to the deadline.

So practitioners should get cracking with the new list to ensure that declarations are filed by 24 September 2016, or rights will be lost forever.