Getting used to EU IPO

It is a whole month since the end of the community trademark and the rise of the EU TM.

Everything still works - but a tad slower perhaps but maybe thats just catch up. On filing applications I have discovered that if I want to be on the fast track I must forego the right to receive the search report of earlier European union marks. I am expecting that I will be able to see the search report online as there is still an obligation for the search to be carried out.

I have noted that I can still claim priority and seniority on the fast track if I provide the evidence.

There has been lots of excitement about the possibility of clarifying the class heading registrations using the Article 28(8) procedure. You can only do it between 23 March 2016 and 24 September 2016 inclusive. There is an online form or rather you use the existing online form choose Recordal then EUTM and then the big inviting button labelled "Declaration under Article 28(8) EUTMR"

Its not a complicated form just a box that invites you to provide your declaration, identifying your Goods and Services per class. There is no fee. Maybe it will be a hot topic of conversation at INTA in Orlando. I will be there. Sadly I suspect that having advised clients in the past to say what they mean, this is not a marketing opportunity that will be profitable. You cannot use Article 28(8) procedure

 If the specification includes specific terms plus the class heading then chances are you are okay anyway and dont need to use the service

 If the specification only includes part of the class heading then you cannot use the service

 If the specification includes the class heading with an exclusion then you cannot use the service

If the applications were applied for after 22 June 2012 then you cannot use the service

Corsearch have ingenuously offered to create a new report that identifies by owner name relevant registrations from the right period which include class headings that might need to be amended. I have not been paid to promote this product but Corsearch continue to support the newly Chartered Institute of Trade Mark Attornies evening lectures with canapes and wine.

European Case Law Review 2014

Guy Heath

One of the most valuable sessions in San Diego was the European case law review, a swift canter through the key cases of 2014. Clearly a huge amount of work had gone into the final selection so it was dissapointing not to have any handouts for further perusal on the plane home. This year the INTA app promised handouts and a discussion capability, but it delivered a sparse selection of speaker bios instead. Nevertheless INTA has published in its Reporter a valuable digest which you can download here. I reccommend you do so as its beautifully organised by topic and provides national cases as well. No trademark agent should be without it.  Thanks Guy. We would love to have the slides too.