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EU Intellectual Property Office faces huge changes

Written by Thomas Mould on 14 March 2016

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The Community trademark system was introduced in 1996, it is now facing its biggest reform. The recently adopted European Trademark Reform will bring substantial changes not only to Community trademarks but also for owners of national trademarks in the EU.

The reforms consist of two legislative components:

The amended Community Trademark Regulation (Regulation (EU) 2015/2424) sets out rules applicable to EU trademarks and will come into force on 23 March 2016, with staggered implementation.

The new Trademarks Directive (Directive (EU) 2015/2436) intends to further harmonize the national trademark systems of the EU member states. It has come into effect on 13 January 2016 but requires implementation by the individual EU member states. Two deadlines are running for the various amendments. The vast majority of changes must be implemented by 14 January 2019.The introduction of mandatory office proceedings for revocation and declaration of invalidity for trademarks has to be implemented by 14 January 2023.

Changes:

1.       The Community Trademark (CTM) will be re-named to European Union Trademark (EUTM) and the Office for Harmonization in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO) as of 23 March 2016.

 

2.       There will be a new one-fee-per-class-system for trade mark applications and renewals of European Union Trademarks which will be accompanied by a new fee structure. These changes will come into effect on 23 March 2016 and OHIM has already issued a new fee schedule. Renewals will become substantially cheaper, however the official fees for trademark applications containing 3 or more classes will increase.

 

3.       The regulation will also affect the classification of trade marks. Under previous practice, "broad" specifications consisting of "class headings" were deemed to cover all goods and services within that class. Under the new rules, and in accordance with general practice, only goods and services that fall within their literal meaning will be covered. The proprietors of EUTMs filed before 22 June 2012 and designating the entire heading of a class will however be able to notify the Office of the European Union, no later than 24 September 2016, of their intention to seek protection in respect of goods and services beyond those covered by the literal meaning of the said heading (Article 28(8) of the Regulation).

 

4.       It will become easier to register non-traditional trademarks since the requirement to represent a mark "graphically" will no longer apply. This change is very substantial and will enter into force on 24 September 2017 for EUTMs. It will enable trademark applicants to apply for trademarks protecting sound, colour, shapes and movements more easily. To give an example that demonstrates the relevance of this change: Under the current system, sound marks were registered only when a music notation was provided. This will not be required any longer with the effect that sounds not representable by music notes may be registered.   

 

5.       The opposition period for EU designations in International Registrations (IRs) presently commences six months after publication. This has been amended to be one month after publication. The opposition period itself remains three months. If no oppositions are filed, the IR will be granted protection within 4 months rather than within 9 months (as is current practice).

 

6.       Under the new law, renewals for CTMs ("EUTMs" as from 23 March 2016) must be requested by the date of expiry and no longer at the end of the month during which the expiry of the trademark occurs.

 

7.       An EU Certification Mark will be introduced as a new type of trademark at EU level as of 23 September 2017. Certifying institutions will be able to permit adherents to the certification system to use the mark as a sign for goods or services complying with applicable certification requirements. The introduction of EU certification marks will remedy the current inconsistency between national systems and the EU trademark system.

 

8.       The own name defence will largely be abolished. It will only be available for natural persons. This will require businesses to ensure that they undertake the necessary clearance searches to satisfy themselves that their name is not problematic as against a third party's right.

 

9.       Protection of marks with a reputation against dilution becomes mandatory for national trademark systems of all EU Member States. Although this is already the law in most Member States, bad faith must be a possible ground for declaration of invalidity of a trademark.

 

10.   Opposition proceedings as well as administrative (PTO) proceedings for revocation or declaration of invalidity of national trademarks must be provided by EU Member States. Such disputes have to be brought before the national courts of the various Member States. However, Member States have several years to introduce these changes. 

the Community trademark system was introduced in 1996, it is now facing its biggest reform. The recently adopted European Trademark Reform will bring substantial changes not only to Community trademarks but also for owners of national trademarks in the EU.

The reforms consist of two legislative components:

The amended Community Trademark Regulation (Regulation (EU) 2015/2424) sets out rules applicable to EU trademarks and will come into force on 23 March 2016, with staggered implementation.

The new Trademarks Directive (Directive (EU) 2015/2436) intends to further harmonize the national trademark systems of the EU member states. It has come into effect on 13 January 2016 but requires implementation by the individual EU member states. Two deadlines are running for the various amendments. The vast majority of changes must be implemented by 14 January 2019.The introduction of mandatory office proceedings for revocation and declaration of invalidity for trademarks has to be implemented by 14 January 2023.

Changes:

1.       The Community Trademark (CTM) will be re-named to European Union Trademark (EUTM) and the Office for Harmonization in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO) as of 23 March 2016.

 

2.       There will be a new one-fee-per-class-system for trade mark applications and renewals of European Union Trademarks which will be accompanied by a new fee structure. These changes will come into effect on 23 March 2016 and OHIM has already issued a new fee schedule. Renewals will become substantially cheaper, however the official fees for trademark applications containing 3 or more classes will increase.

 

3.       The regulation will also affect the classification of trade marks. Under previous practice, "broad" specifications consisting of "class headings" were deemed to cover all goods and services within that class. Under the new rules, and in accordance with general practice, only goods and services that fall within their literal meaning will be covered. The proprietors of EUTMs filed before 22 June 2012 and designating the entire heading of a class will however be able to notify the Office of the European Union, no later than 24 September 2016, of their intention to seek protection in respect of goods and services beyond those covered by the literal meaning of the said heading (Article 28(8) of the Regulation).

 

4.       It will become easier to register non-traditional trademarks since the requirement to represent a mark "graphically" will no longer apply. This change is very substantial and will enter into force on 24 September 2017 for EUTMs. It will enable trademark applicants to apply for trademarks protecting sound, colour, shapes and movements more easily. To give an example that demonstrates the relevance of this change: Under the current system, sound marks were registered only when a music notation was provided. This will not be required any longer with the effect that sounds not representable by music notes may be registered.   

 

5.       The opposition period for EU designations in International Registrations (IRs) presently commences six months after publication. This has been amended to be one month after publication. The opposition period itself remains three months. If no oppositions are filed, the IR will be granted protection within 4 months rather than within 9 months (as is current practice).

 

6.       Under the new law, renewals for CTMs ("EUTMs" as from 23 March 2016) must be requested by the date of expiry and no longer at the end of the month during which the expiry of the trademark occurs.

 

7.       An EU Certification Mark will be introduced as a new type of trademark at EU level as of 23 September 2017. Certifying institutions will be able to permit adherents to the certification system to use the mark as a sign for goods or services complying with applicable certification requirements. The introduction of EU certification marks will remedy the current inconsistency between national systems and the EU trademark system.

 

8.       The own name defence will largely be abolished. It will only be available for natural persons. This will require businesses to ensure that they undertake the necessary clearance searches to satisfy themselves that their name is not problematic as against a third party's right.

 

9.       Protection of marks with a reputation against dilution becomes mandatory for national trademark systems of all EU Member States. Although this is already the law in most Member States, bad faith must be a possible ground for declaration of invalidity of a trademark.

 

10.   Opposition proceedings as well as administrative (PTO) proceedings for revocation or declaration of invalidity of national trademarks must be provided by EU Member States. Such disputes have to be brought before the national courts of the various Member States. However, Member States have several years to introduce these changes. 

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