The reform of the European Union trademark system entered in force on March 23, 2016. Here are the 13 essential points to remember about the implemented changes.
1. New name
The OHIM (Office for Harmonization of the Internal Market) becomes the EUIPO (European Union Intellectual Property Office) and the CTM (Community Trade Mark) becomes the EUTM (European Union Trade Mark).
After having had hard time in getting used to the new CJEU after 2009, you just have to assimilate these new names, which may be the hardest part of this reform…
2. Changes of official fees
The previous system was operating with the same fees (€900) for a trademark application filed in up to three classes of products/services.
The fees will now be paid per class and thus will be lower when filing for only one class (€850), but higher for two or more classes (€50 for the second class and €150 for each further class). The three-class system is also abandoned for renewal fees, which are reduced from €1,350 for three classes to €850 for the first class, €50 for the second class and €150 for each further class.
3. Description of goods and services
The system implemented after the IP Translator decision (please refer to my article of November 20, 2013) is officially integrated in the European regulation. That means that if you choose to file trademark applications with the full class headings definitions, then only the specific items listed in the class headings will be covered and not additional items included in the same class (in the alphabetical list) but not listed in the headings. What does it mean? That you will have to carefully check that the goods/services provided under the mark are indeed included in these headings and if not, to add them to the list.
What about already registered European trademarks? If you hold European trademark registrations which were filed before June 22, 2012 with full class headings and do not include specific items of interest, you will have a delay of six months, namely, until September 24, 2016, in order to file a declaration for adding these items. The declaration form is available online on the OHIM, sorry, the EUIPO website and you may find a useful FAQ on this point here: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/legal_reform/FAQ-Article-28(8)_en.pdf.
This may be one of the most important points of the reform, since all trademarks’ owners should now carefully review their European registrations portfolio, in order to check whether a declaration should be filed. Otherwise, they may jeopardize the scape of protection of their marks and proper enforcement.
4. Non-traditional trademarks
No more graphic representation is required in order to register trademarks, which will ease the use of new technologies in applying for sound or smell marks. This should also enable easier registration of moving image marks.
5. Opposition period
The three-month opposition period for international trademarks designating the European Union will start one month after the publication date, instead of six months. This is the end of a tiresome waiting period for your application to become registered.
6. Certification marks
Certification marks are officially introduced in the European system. This will enable organizations or institutions to register marks which must comply with specific standards in order to be used by others (“Woolmark” for example).
7. Appellations of origin
Appellations of origin and geographical indications will now be accepted as grounds for opposition or cancellation of a trademark including such appellations. They may also constitute a ground for refusal of a new trademark by the EUIPO.
8. Common law rights
Famous marks with extensive reputation (even not registered) will gain a better protection. For example, they may constitute a ground for opposition or cancellation, even for goods or services not included in trademark registrations.
9. Comparative advertisement
The use of a registered European trademark in comparative advertisement may now be considered as an infringement.
10. Search reports
Search reports on previous registered similar trademarks which are practiced by the EUIPO, are now optional. An applicant wishing to receive these search reports will have to expressly mention it in its application.
11. Cooling-off period
The cooling-off period in opposition procedures aimed to give the opportunity to the parties to reach an amicable settlement, becomes compulsory for a minimum period of two months.
12. Proof of use
The five-year proof of use required from the owner of a prior trademark registration in opposition procedures, will now be calculated from the application or the priority date of the opposed mark, instead of its publication date.
13. Goods in transit
It will now be possible to seize counterfeit goods in transit infringing a European trademark registration, even if they are not eventually aimed to the European market.