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New and Improved Trade Mark System for the European Union
30 May 2016 by Steven Wake & Kate Cruse

We are pleased to announce that on 15 December 2015 the EU Parliament adopted the Trade Mark Reform Package. The package includes a Regulation (amending existing EU trade mark law) and a Directive (requiring member states to further harmonise national trade mark laws). The new Directive was published on 23 December 2015 and entered into force 20 days later (but member states have a 3 year term to implement most of the changes required). The amended Regulation came into force on 23 March 2015, 90 days after its publication on 24 December 2015.

The main points from the revised Regulation are:

New Names

  • The OHIM was re-named the European Union Intellectual Property Office (EUIPO).
  • The Community Trade Mark was renamed as the European Union Trade Mark (EUTM).
  • The President was renamed the "Executive Director" and the Vice President became "Deputy".
  • The Administrative Board became the "Management Board".

New Fees and Procedure

  • Application fees are now on a per-class basis, meaning that the minimum "up to 3 classes" fee has been abolished. The official fee for one class is now less than the old three class fee. This is good news for SMEs and those only requiring protection in one class! It is hoped that this change will also reduce "cluttering" of the register by marks in classes which are not really needed by the trade mark owner.
  • Renewal fees have been reduced significantly to the same level as application fees. (Any renewals already paid at the higher rate for trade marks due for renewal on or after 23 March will obtain a refund).
  • Renewal fees need to be paid by the renewal date, not the end of the month, as was the old practice.
  • Opposition, cancellation and appeal fees are slightly reduced.

General changes

  • Priority must be claimed upon filing; previously it was possible to claim priority within 2 months of filing.
  • If you wish to receive a search report from the CTM register (now the EUTM register) it is necessary to "opt-in". Previously this was provided on an automatic basis. There is now no fee for opting in.
  • There is now an exclusion from registration of all signs that consist exclusively of characteristics which (a) result from the nature of the goods, (b) are necessary for a desired technical result or (c) give significant value to the goods. Previously this exclusion was limited to shape marks only.
  • The codification of the result of the IP TRANSLATOR case from 2012, dealing with the use of class headings in specifications of goods/services. Prior to the decision a class heading was deemed, by OHIM, to cover all goods/services in the class. Going forward specifications will be interpreted literally. It is important therefore to file for a list of goods/services which mentions the exact goods/services of interest.
  • There is a six month window until 24 September 2016 for trade mark owners to submit a revised specification of goods/services for cases where the current specification contains the wording of the class heading. Please see more detailed information regarding this particular point in Leona Ogier's article in this edition of the Trade Mark Update.
  • EU designations under an IR will proceed more quickly than in the past. The 3 months opposition period will start 1 month after publication by the EUIPO rather than the prior 6 months.
  • It is now possible to oppose an application on the basis of geographical indications and designations of origin.
  • The codification of the DAVIDOFF case relating to opposition on the basis of reputation; it is now possible to file opposition on the basis of reputation, whether or not the goods/services covered by the opposed application are similar OR dissimilar to the goods/services for which the opponent claims reputation.
  • In oppositions, "proof of use" now needs to be filed for the five years period up to the filing date of the opposed application, rather than the publication date of the opposed application as previously.
  • Disclaimers are no longer possible. If you have an International Registration that includes a disclaimer, that  will not carry over to the EU designation
  • The EUIPO will be able to re-open examination on absolute grounds any time before registration. This was previously the practice, but has now become official.

Changes that require Secondary Legislation - entry into force 1 October 2017:

  • Certification marks will be allowed; currently only ordinary marks and collective marks are provided for by the Regulation.
  • There will be no requirement for a trade mark to be capable of graphic representation - a trade mark must merely be represented technologically in a manner in which is can be precisely identified. This may assist with the filing of non-conventional marks such as smells or sounds.

The main points from the new Harmonisation Directive are:

  • It is now possible for a trade mark owner to have infringing/counterfeit goods seized in the EU, even if the goods are only in transit to a final destination outside of the EU, as long as the owner has rights in the final destination.
  • All Intellectual Property Offices must provide an administrative process for opposition, revocation and invalidity. Malta will need to introduce opposition proceedings and Benelux, France, Spain and Italy will need to introduce administrative cancellation proceedings. This should lead to significant cost savings compared to Court proceedings.
  • All states must provide for the cancellation of a trade mark filed in bad faith.
  • All states must provide for reputation-based refusal. Cyprus and Lithuania do not currently provide for refusal on that basis.
  • All states must provide a 6 months grace period for late renewal of registrations.

We welcome the changes and will be looking more fully at the impact of them, and the steps which trade mark owners should be taking in light of them, over the coming months.

If you require further information regarding the Reform Package please contact your usual Forresters' attorney who will be happy to advise you.