A closer look at the European Community Trade Mark reform
Thursday 3rd March 2016
On 23 March 2016, the EU Trade Mark Regulation No. 2015/2424 will come into force.
Part of this law change is the limitation of Community Trade Mark registrations which cover class heading terms. There will be a six-month period during which trade mark owners of Community Trade Mark registrations can broaden the scope of protection for registration in which class headings have been employed. This particular aspect was traversed in our recent article “Reform to European Community Trade Mark Regulations”. The reform also introduces other important changes:
CTMS to EUTMs:
Community Trade Marks, “CTMs”, will become known as European Union Trade Marks, “EUTMs”. The Community trade mark office now known as “OHIM”, the Office for Harmonization in the Internal Market, will become known as “EUIPO”, the European Union Intellectual Property Office.
Changes of official fees:
EUTM applications will incur a fee for every claimed class, rather than the current flat fee for filing in three classes. If you are considering filing a EUTM application in the near future covering multiple classes, it would be prudent to do so prior to the implementation of the new Regulation on 23 March 2016.
EUTM renewal fees will be lowered considerably.
Trade marks will no longer be limited to graphic representations as long as they are represented clearly and explicitly. This will enable signs such as sounds and smells to be registered as trade marks.
Non-traditional trade marks will be subject to strict criteria as the current registrability exclusions, which only apply to shape marks, will be rolled out to cover all signs that consist only of features which: (a) are a result of the nature of the goods, (b) are a requirement for the intended technical result, or (c) provide significant value to the goods.
In line with national search reports, EUTM search reports are now optional. No official fee will apply.
Priority must be claimed at the time of the filing process and not after. Supporting documents to the claim are exempt from this rule and may be filed within three months of filing.
The grounds on which absolute refusal may be based will be expanded. Signs which conflict with protected designations of origin, geographical indications, traditional terms for wine, traditional specialities guaranteed and plant varieties will fall within the criteria for absolute refusal.
The three month opposition timeframe for European Union designations of an International Registration will now be calculated from one month post publication, rather than the current six months.
An opposition will be able to be based upon reputation regardless of whether or not the goods or services covered by the opposed application are similar or dissimilar to those goods or services in which the opponent claims to have a reputation.
Proof of use period:
The current five year ‘proof of use’ timeframe will be calculated from the filing date or priority date of the opposed application, depending on which is earlier. It will no longer be calculated from the publication date.
Counterfeit goods in transit through the European Community will infringe a EUTM registration even if they are not intended for the European Union market. This is subject to proof from the importer of the goods that the rights holder would be unable to prevent sale of those goods in the country for which the goods are destined.
For further advice on these key changes and other changes to be brought about by the new regulations, please do not hesitate to contact a Baldwins representative.
This article was written with assistance from Mariyam Sheeneez.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.