Launching Innovative Service for Clients with EU Trade Mark Portfolio

22 Mar 2016

International law firm Simmons & Simmons has unveiled an innovative software backed service, Simmons & Simmons Translator, designed to deal with changes in EU trade mark law; a must have for all clients with a significant trade mark portfolio.

That change in the law, which potentially affects every single owner of Community trademarks (CTMs) with marks which predate June 2012, has opened up a six month window which will close in September 2016, at which time trade mark owners have to take certain actions or they may have their rights unilaterally restricted.

Commenting on the launch of the product, partner and head of IP, Marc Döring said: "The process of working out how to file Article 28 declarations and how to protect your CTM portfolios is a long, painful process if done by hand – hours or days of work. We have created a unique end-to-end product that will handle declarations with the minimum of fuss, and at a price which makes sense."

Darren Meale, a managing associate in intellectual property and the creator of Simmons & Simmons Translator, continued: "We realised last year when the EU law reforms were announced that Article 28 was going to be a nightmare for clients. We created Simmons & Simmons Translator to take that headache away: it is a unique service providing a simple solution to an otherwise complex problem."

Development of the service was led by Darren Meale with support from intellectual property partner, David Stone and a number of other partners, associates and professional support staff from across the firm. 

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Notes to editors:

1. We are a leading international law firm with fully integrated teams working through offices in Europe, the Middle East and Asia, and bring experienced professionals to some of the most active growth markets today. Our focus on a small number of sectors means we are able to understand and respond to our clients’ needs. Our industry sectors are: Asset Management & Investment Funds, Financial Institutions, Life Sciences and Telecoms, Media & Technology (TMT). We also focus on the E&I market, in particular through our international projects and construction teams. We have a track record for innovation and delivering value to clients through new ways of working.

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5. Brand owners have until 24 September 2016 to file “Article 28” declarations at the EU trade mark otherwise, otherwise certain of their pre-June 2012 CTMs will be deemed to protect only the goods and services covered by the “literal meaning” of the relevant Nice class headings. Doing this manually is a time consuming and tricky process, the difficulty of which some brand owners may well underestimate. With the help of our unique Simmons & Simmons Translator software tool can, we can deal with Article 28 declarations for brand owners automatically, saving them considerable time and money, using proprietary technology to review their portfolio, ascertain which CTMs are eligible, and prepare appropriate declarations for filing at OHIM. To find out more, visit our elexica page here

6. For further information, please contact Heather McMaster, Senior Communications & PR Executive on +44 207 825 3962 or at heather.mcmaster@simmons-simmons.com , or Lauryn Mann, Communications & PR Executive on +44 20 7825 3764 or email lauryn.mann@simmons-simmons.com