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EU trade mark reform

Written by Asif Cheychi on 30 August 2016

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Numerous UK businesses rely heavily on the EU trade mark system. The European Commission decided to review the trade mark system in 2008. These reforms came into force in March 2016. Here are some of the changes which came with the new regulation (and how they could affect you):

• Businesses which had registered a trade mark in Europe used to have a ‘Community mark’. This has been replaced by the European Union Trade Mark (‘EUTM’). Also, when registering or updating a trade mark, businesses must now deal with the European Union Intellectual Property Office (‘EUIPO’) instead of the old Office for Harmonisation in the Internal Market (‘OHIM’).
• The reasons for which applications are rejected have widened. ‘Other characteristics’ are now looked at, which cannot be overcome by simply proving that the mark is distinctive.
• Actions which are classed as infringement have been expanded, which now include: - use of a trading or company name. – Preparatory acts (eg. Adding marks to packaging/labels). – Marks in comparative advertising that do not comply with the Comparative Advertising Directive.
• EUTM owners can now seize counterfeit goods travelling through the EU.
• Registering smells and sounds has never been easier; EUTM’s now just need ‘clarity and precision’.
• Fees have now been reduced. Online filing, opposition, invalidity/revocation proceedings are all now less costly than before. According to the European Commission, businesses will save up to 37%.
• The Regulation also states that the words used in the class specification must be interpreted literally; meaning businesses must specifically state which types of goods/services they want the EUTM to cover.

The UK will remain a full member of the European Union for a further 2 years and as such EUTMs will stay valid until then. After this period, the status of protection in the UK is uncertain. Trade mark owners who require protection in the UK ought to register their marks domestically in the event that UK marks have less status in Europe than they do now due to Brexit.

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