Home > Insights > Overview of EU trade mark reform: When, why and what you need to know

Authors: John Wallace , Rachel Conroy , Henry Schlaefli and Roshani Muniweera
15 January, 2016

When

Most of the changes under the new Regulation (No. 2015/2424) will take effect from 23 March 2016. National registries will have three years to implement the new Directive (No. 2015/2436) into law once it has been published.

Why

The new system should be more accessible, cheaper, easier to use and will aim to harmonise the existing national EU trade mark systems.

What you need to know

The Community Trade Mark Office (officially known as OHIM: The Office for Harmonisation in the Internal Market) will be changing its name to The European Union Intellectual Property Office (EUIPO) and the Community Trade Mark will now be known as the European Union Trade Mark (EUTM).

New formalities: from filing to registration of European Union Trade Marks (EUTMs)

  • Filing: Filing of EUTM applications will now only be permitted at the European Union Intellectual Property Office (EUIPO).
  • Priority: The two-month period to claim priority post-filing is no longer available; priority claims must be included at the time of filing.
  • Register searches: EUIPO register searches are now optional and have to be requested at the time of filing, at no additional cost.
  • Fees: EUTM application and renewal fees will be charged per class.
  • Graphical representation: EUTMs no longer need to be represented graphically. A trade mark must be represented on the register “in a manner which enables the public, and the relevant authorities, to determine the clear and precise subject matter of the protection afforded to its proprietor.”
  • Certification marks: EU certification marks will also be an option under the new system. These marks certify the nature or origin of goods or services in relation to their use. This could be indicating a particular region of origin, quality assurance, a manufacturing method or any other definable characteristic of the goods or services.

Oppositions

  • Opposition period: The three month opposition period for EU designations of International Registrations now begins one month after the first publication by the EUIPO.
  • Basis of opposition: EUTM applications can be opposed on the basis of protected designations of origin or geographical indications and/or earlier trade marks protected abroad, provided the applicant was acting in bad faith.
  • Proof of use date: The proof of use date for EUTM oppositions based on earlier marks will now be the filing date or priority date of the opposed application and not the publication date.
  • Mediation: The EUIPO can establish a Mediation Centre.

Key changes for existing rights holders

  • Class headings: In line with the CJEU’s ruling in the IP Translator case, class headings now only cover their literal meanings. For owners of CTMs registered before 20 June 2012 there will be a period of six months, following the entry into force of the Regulation, to file a declaration indicating the specific goods and services that the heading was intended to cover, provided it falls within the list of the Nice Classification.
  • Counterfeit goods: Trade mark proprietors will now have the right to prohibit goods in transit which would be regarded as counterfeit in the Member State where they come under Customs inspection. However, if the owner of the goods can prove that the Trade Mark Proprietor could not prevent use of the goods in the intended final territory, then this right is lost.

Further harmonisation of national TM laws

  • Revocation and invalidity: Administrative revocation and invalidity actions at all national registries will now be available.
  • Provision for joint suspension: National opposition, revocation and invalidity proceedings will also include a provision for a jointly requested suspension period of at least two months at all national trade mark offices.
  • Mandatory provisions: Bad faith invalidity on absolute grounds, reputation-based refusal and a six month grace period for late renewals will be mandatory at all EU national offices.
  • Use of non-distinctive marks: Proprietors shall not be entitled to prevent a third party from using a non-distinctive mark in the course of trade, as was already the case in most member states.
  • Bad faith: Where an application is made in bad faith, Member States may provide that such a trade mark should not be registered on absolute grounds.
  • Relative grounds for refusal/invalidity: Member States may also provide that a trade mark is not to be registered/liable to be declared invalid on relative grounds if the mark is liable to be confused with an earlier trade mark protected “abroad” provided that the applicant was acting in bad faith.
  • Non-use period: The relevant start date for the five year non-use period will now be calculated from the date when the mark can no longer be opposed, or from the date a decision becomes final, or the opposition is withdrawn.

We will be publishing more details on the changes shortly and will provide comment on how these will affect you. We will also contact EUTM owners directly about any action that is required in advance of implementation of the new Regulation.

If you have any queries about how the reforms may affect your EUTMs, please contact John Wallace or your usual Boult Wade Tennant advisor.

 

Authors

john-wallace

John Wallace
Managing Partner

Phone this number +44 (0)20 7430 7500

Email this address jwallace@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT

Rachel Conroy

Rachel Conroy
Partner

Phone this number +44 (0)20 7430 7500

Email this address rconroy@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT

Henry-Schlaefli

Henry Schlaefli
Trade Mark Assistant

Phone this number +44 (0)20 7430 7500

Email this address hschlaefli@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT

Roshani Muniweera

Roshani Muniweera
Trade Mark Assistant

Phone this number +44 (0)20 7430 7500

Email this address rmuniweera@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT