From 23rd March 2016, the reform of the European Union trademark system comes into force. The new system includes not only a name change, but also a new fee-system and many more. This article gives you a good overview about what happened and what the most important changes are.
1. Name changes
The Office for Harmonization of the Internal Market (OHIM) became the European Union Intellectual Property Office (EUIPO). There is a second name change: the Community Trade Mark (CTM) is now called “European Union Trade Mark” (EUTM). The two name changes are the most significant changes the new system has. To assimilate the new names might be the hardest part of the whole reform.
2. Fee-changes – pay for what you need
In an other article we’ve published earlier this year, we have already told you about the new fee system and the positive impacts for applicants that only want to apply for one class. The previous fee system did not differ between one and up to three applications. So at the OHIM-time you payed “3-for-1”. Since March 23rd you now “Pay-per-Class“. A single application now costs 850€ (-50€), but the more classes you want to register, the more it costs: The second class costs 900€ (+0€) and each further class costs 1.050€ (+150€).
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. Goods and services: new descriptions
The system implemented after the IP Translator decision 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 (alphabetical list) but not listed in the headings. Therefore make sure that the goods/services provided under the mark are indeed included in these headings and if not, to add them to the list.
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 (September 24, 2016), in order to file a declaration for adding these items. The declaration form will be available online at the EUIPO website.
Please make sure to carefully review your European registrations to check whether a declaration has to be filed or not.
4. Non-traditional trademarks – no more graphic representation
It is not required anymore to hand in a graphic in order to register trademarks. This will ease the use of new technologies in applying for sound or smell marks. It should also enable easier registration of moving image marks.
5. Opposition period – less waiting time
Before EUIPO the opposition period for international trademarks designating the European Union started six months after publication date. With the new EUIPO reform it starts one month after the publication, reducing the opposition period. That can quicken your application to become registered.
6. European Union Certification Mark
Certification marks will officially be introduced in 21 months’ time. The marks will enable organizations or institutions to register marks, which must comply with specific standards in order to be used by others.
7. Appellations of origin
Appellations of origin and geographical indications will now be accepted as ground 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 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 can now be considered as an IP-infringement.
10. Search reports
Search reports for previous registered similar trademarks, which were practiced by the OHIM in order to alert owners of these prior marks, are now optional. This means that trademark owners will have to reconsider their watching policy in order to timely file oppositions against similar trademark applications.
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 – application or priority date decisive
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. (Even) More protection for your trademark(s).