EU Trade marks – Upcoming Amendments

Trade mark professionals are keenly aware of the two new instruments of the European Union which affect the EU Trade mark landscape, these being the new Directive (EU) 2015/2436 (theEU Trade Mark Directive”), which has entered into force as of the 13th January 2016, and the Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation (the “EU Trade Mark Regulation”), which will enter into force on the 23rd March 2016.
The scope of the new Directive and new Regulation is to modernize the current EU trade mark legislation, by making it more user-friendly, accessible and cost-efficient for business. It is also aimed to increase the speed of processing applications and achieve more consistent and reliable results.
Key amendments include:

  • The definition of a “Trade mark” has now been expanded to include “colours” and “sounds”.
  • The filing for an EU Trade mark will now only be made with the EU Trade mark issuing authority (currently OHIM). The ability to file them at national offices will be abolished.
  • Filing fees will now be payable concurrently with the filing of the application (currently, the system allowed up to 30 days within which to make the payment).
  • The current system of filing for three (3) classes for a fixed price will be replaced by a “price per class” fee (this amendment will affect both new filings and renewals). The fees to cover a second class and subsequent classes have been reduced from EUR 150 to EUR 50.
  • Trade marks are no longer required to be depicted in graphic representation (currently, this is a requirement in order to proceed with the application and obtain protection). Instead, a more general approach of “any appropriate form” is allowed as long as it fulfils the established Sieckmann criteria. This is expected to offer greater flexibility for applicants.
  • Reference to “Community Trade marks” will be abolished and replaced with “European Union Trade marks”, modernizing the name to be in line with the changed nature of the European Union. Furthermore, the EU issuing authority which is now named “Office for Harmonization of the Internal Market” (commonly referred to as OHIM), will be renamed to “European Union Intellectual Property Office”.
  • Following the decision of the Court of Justice of the EU in Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks (“IP TRANSLATOR”), the use of general terms in a Trade mark specification will be interpreted as including only those and services covered by the literal meaning of the term and nothing more.  This will also affect currently issued Community Trade marks.
  • Existing Community Trade mark owners who have trade mark registrations filed on or before 21 June 2012 and which included the class heading will be given a transitional period of six months commencing on 23 March 2016 (i.e. by the deadline of 23 September 2016) to file a declaration stating that their intention at the time of filing of the application had been to seek to protect all the goods and/or services in a given class by utilising the class heading.
  • The notion of “Bad Faith” has been introduced as a valid reason for opposition against the registration of a Trade mark (whereas, previously this was only available for a procedure for invalidation of an existing Trade mark).

The above represent the main amendments which are being introduced. For any specific enquiries or requirements, do not hesitate to contact us directly.

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