EU: Significant changes to the trademark system

The EU trademark reform package was approved by the European Parliament on 15 December 2015. The amendments are expected to come into force in March/April 2016. The reform package brings changes to the Community Trademark Regulations (Council Regulation (EC) No 207/2009) and adopts a new Directive to approximate the laws of the Member States relating to trademarks. The reform is extensive; the new Directive consists of 57 articles whereas the old Directive only had 19 articles. Major changes are also made to the regulation: for example, the structure of the fees payable will be significantly changed. The aim of the reform is to foster innovation and economic growth as well as to ensure coexistence and harmonization between trademark systems. The changes are intended to make trademark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. We have listed some of the main features of the changes to the regulation and the new directive. The list is not exhaustive – and this is just a very short overview.

1. Name changes

Community trademarks will become European Union trademarks (“EU trade marks“ or “EUTMs“). The name of the Office for Harmonization in the Internal Mark (OHIM) will be changed to European Union Intellectual Property Office (“EU IP Office” or “EUIPO”) and the Community trademark court will be known as EU Trademark Court.

2. Use of class headings

The rules for classification of goods and services will be updated according to the principles set out by the CJEU in the IP Translator case (C-307/10) rendered on 19 June 2012. The goods and services for which trademark protection is sought for, need to be specified more clearly and with more precision. The use of general terms will be interpreted as including only all goods and services clearly covered by the literal meaning of the term. Owners of EU trademarks which were applied for the entire class heading before 22 June 2012 can file a declaration that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class. The declaration needs to be filed at the Office within six months of the entry into force of the Regulation.

3. Anti-counterfeiting provisions

In order to strengthen trademark protection and combat counterfeiting more effectively, the rights of the proprietors of EU trademark will be strengthened. It will be possible for the owners of EU trademarks to stop transit of goods, when they bear without authorization a trade mark which is identical or essentially identical with the EU trade mark registered in respect of such goods.

4. Fee structure

The basic application fee will cover only one class of goods and services and is 850 EUR (when filed by electronic means, otherwise 1000 EUR). The fee for the second class will be 50 EUR and every class after the second 150 EUR. The renewal fees will be lowered to the same level as the application fees. In the Directive, the one-class-per-fee-system is made optional for the Member States. There are more changes included. At this point in time, we only posted a couple of significant changes. As the implementation of the new legislation comes closer in March/April 2016, we intend to go into more detail.