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10 Facts about the EU Trade Mark Reform
18 May 2016 by Janette Hamer

10 things you should know about the recent EU Trade Mark Reform.

1.   New terminology

The term European Community has been replaced by European Union ("EU"). Therefore, the Community trade mark is now the EU trade mark.  In addition, the Office for Harmonisation in the Internal Market has been renamed as the EU Intellectual Property Office ("EU IPO").

2.     Fees

The fee structure for applications has changed from coverage of up to three classes to a one-fee-per-class-system.  Renewal fees and fees for cancellation actions have been reduced.

3.     Art 28 declarations

Trade marks filed before 22 June 2012, which cover class headings in the specification can be amended by notification to the EU IPO that the registration is intended to cover goods and services beyond the literal meaning of the class heading. The deadline for filing the declaration is 24 September 2016.

4.     Graphical representation

A graphical representation is no longer required.  This may make it easier to register unusual trade marks. However, the sign still needs to be "represented in a manner which enables the competent authorities and public to determine the clear and precise subject matter of the protection afforded to the proprietor".

5.     Renewal deadlines

Renewals of EU trade marks must now be requested by the date of expiry and not by the end of the month in which the expiry occurs.

6.     Opposition period for IR (EU)

An EU designation under an IR will now proceed more quickly.  The opposition period will start one month after publication of the designation details rather than six months, as was previously the case. 

7.     Designations of origin/geographical indications

Designations of origin and geographical indications can now form a basis for refusal or invalidity on both absolute grounds and relative grounds.

8.     Own name defence

Businesses can no longer use the own name defence (only applies to individuals). The use of a trade mark as a company name may amount to infringement and company name watching becomes more important.

9.      Counterfeit goods

Counterfeitgoods in transit through the EU can be stopped if the goods (or packaging) bear a mark identical to the owners mark or a sign. However, there is a defence if the owner of the goods can show that the owner of the mark is not entitled to prevent the goods being placed on the market in their final destination.

10.  Certification marks

In the fullness of time there will be provision for the registration of EU certification marks.