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Amendments to Trademark Laws

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Sep 16, 2014 (Newsletter Issue 14/14)
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Change in Examination of International Registrations Designated in EU

OHIM announced on its website that the office will begin examining the classification of international registrations designated in the European Union (EU), for vague terms as and from 1 October 2014.

This change brings OHIM's practice into line with that of EU national and regional IP offices, as previously outlined in the Common Communication on the implemetation of IP Translator.

On 19 June 2012 the Court delivered its ruling in Case C-307/10 "IP Translator" in which it stated that applicants seeking protection of a trade mark must identify the goods and services for which the trade mark is to be protected with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.

In order to align the practice of International Registrations designating the EU with direct filing CTMs, the Office has decided to use the possibility, under Article 4(1)b of the Madrid Protocol, of objecting to terms it considers too broad or too vague, and that lack clarity and precision.

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