Launched in 2008, the project to reform the European trademark system is finally coming to an end. The change will affect EU trademark legislation, and a new Trade Marks Directive will also require the Member States to amend their national trademark laws.
The new system promises clearer and faster processing of EU trademark registrations with greater efficiency and lower costs.
Timing of reforms
An EU trademark Regulation is currently expected to take effect in March-April 2016.
Member States will also be required to harmonise their national legislation over the following three years in accordance with the amended Directive.
The amended EU trademark classification practices will also take effect retroactively with respect to old EU registrations.
The most important change for trademark proprietors concerns new EU trademark classification practices that will require several proprietors to respond promptly.
Active measures will be necessary for EU trademarks based on applications that were filed before 22 June 2012applying class headings of the international Nice classification system. Under the previous practice, such trademarks were deemed to cover all goods or services in the requested class.
This has now changed, with a gradual reform of the classification practice occurring in recent years. Nowadays the scope of protection of a trademark only includes the goods and services that are expressly denoted by the literal meaning of the terms used in the classification.
The legislative reform will expand this modern interpretative practice to cover old EU trademarks, thereby limiting their scope of protection.
Act now! Trademark proprietors only have 6 months to respond
The (European) trademark office will give trademark proprietors an opportunity to specify the registrations of old EU trademarks by adding further goods and services to their scope in order to conserve the originally intended protection conferred by the registration. This may compensate for the narrowing of scope otherwise caused by the new interpretative practice.
Specifications of this kind will only be permitted during a six-month period of grace, i.e. until autumn 2016. The precise transition period will be announced at a later date.
In practice trademark proprietors should check the list of goods and services covered by all of their EU trademark registrations filed before 22 June 2012. Specifications must be made if the application used a class heading that does not explicitly refer to the goods and services that the trademark is intended to protect. The specification of a class heading may only use terms that were included in the version of the Nice classification system alphabetical list that was current at the time of filing the application.
If the list of goods and services used in an EU trademark registration is not specified within the transition period, then the scope of protection conferred by the registration will subsequently be confined by a literal interpretation of the terms used in the list of goods and services.
Lower official fees
Application and renewal fees will be determined by class in future. The new official fees will be:
Application
in 1 class: EUR 850
in 2 classes: EUR 900
Further additional classes: EUR 150 per class
Renewal
in 1 class: EUR 850
in 2 classes: EUR 900
Further additional classes: EUR 150 per class
A change in the official name of the (European) trademark office
Present name: OHIM
Office for Harmonization in the Internal Market
New name: EUIPO European Union Intellectual Property Office
The term European Union Trade Mark will replace “Community trade mark”.
Some examples of other changes arising from the reform:
- Abolition of the graphic representation requirement for trademarks
- A shorter opposition period for EU trademarks requested through the international registration system (Madrid Protocol)
- An opposing party must show that its own older trademark was already in use when the application to register the opposed trademark was filed
Contact us
Heinonen & Co Oy, Attorneys-at-Law will assist trademark proprietors in reviewing EU registrations and submitting specifications. Please contact our specialists for further details of our services.
Sassa Svahn, European Trademark Attorney, sassa.svahn@heinonen.com
Kitty Zarbock, European Trademark Attorney, kitty.zarbock@heinonen.com