Keyboard with one key coloured pink and labelled "All rights reserved" - Intellectual property lawyers

EU trade mark legislation has changed

March 2016 saw a new legislative package of EU trade mark reform. This consisted of a new Directive which reforms national trade mark systems in each EU member state and a new Regulation which made changes to the then Community Trade Mark (CTM) regime. The new Directive must be implemented into UK law (and into the national law of all other EU member states) no later than 15 January 2019. The new Regulation reforming the then CTM regime has been in force since 23 March 2016. The object of this reform is to modernise trade mark systems, making them more efficient and user friendly for businesses. This article focuses on the changes which came into effect under the new Regulation on 23 March 2016. There are other less time critical changes, which we will comment on in later newsletters.

Since March, brand owners looking for EU wide trade mark protection will have noticed a number of changes:-

Change of name

The Office for Harmonization in the Internal Market (OHIM) changed its name to the European Union Intellectual Property Office (EUIPO), and all existing registered Community Trade Marks (CTMs) are now referred to as European Union Trade Marks (EUTMs).

Application fees

The previous €900 flat rate OHIM fee for a CTM application in up to three classes has been replaced. Since 23 March, the new fee for brand owners wishing to register an EU trade mark in just one class is €850. An application to register an EU trade mark in two classes is €900, and each additional class above two costs a further €150. As a consequence, it is more expensive to file in three classes than it was before 23 March 2016.

Renewal fees

The good news for brand owners is that renewal fees went down. Since 23 March, for example, the renewal fee for an EUTM in one class was reduced from €1350 to €850. To avoid brand owners delaying renewals in order to take advantage of the reduction, the EUIPO clarified that any existing EUTMs that were due to expire on or after 23 March are subject to the new renewal fee regime, even if the renewals were requested and paid for before this date.

Use of class headings

The new Regulation codifies an earlier decision of the CJEU in the IP Translator case. In practice, this means brand owners must clearly and precisely identify the goods and services for which trade mark protection is being sought. Use of class headings are interpreted as including only those goods and services clearly covered by the literal meaning of the terms. For brand owners with existing EUTMs filed before 22 June 2012 (the date of the IP Translator decision) which list a class heading in the list of goods and/or services, there is currently a period of grace in which owners have an opportunity to declare that such class heading should be interpreted to cover all goods or services in that class. The required declaration should be submitted within six months of the new Regulation coming into force; that is by 24 September 2016. Failure to make this declaration, will mean the class heading will be interpreted strictly as a reference to the goods and/or services in the class heading only and not to all the other goods or services in that class. We have circulated a more detailed update on this change accessible here: Anything to declare – how clear is your EU trade mark specification?

Enforcement – counterfeits

Holders of EUTMs may now seize counterfeit products that are in transit through the EU, even where those goods are not going to be sold to customers in the EU. Further details are provided in the update below: Recent Measures to Prevent Counterfeit Goods Passing Through the EU.

Roy Crozier, partner in the Intellectual Property Team, said “The latest EU legislative reforms bring about important changes, and as a result, clients need to be reviewing their portfolio and enforcement strategies in order to capitalise on these changes.”

If you have any questions about the changes and how they impact you, please get in touch with our IP team.