Change in EU trademark law and OHIMs handling of trademark applications

The EU has for a long time made efforts to modernize and revise its trademark legislations. The possibility of registering a trademark, which is valid throughout the European Union, has existed since 1996, and after nearly 20 years of growth in terms of number of applications, new technology, and not least the increased awareness of the value of trademarks in the market, it is now time to implement some adjustments. Briefly, the main changes consist of:

  • Change in the pricing structure of trademark applications. Renewal of a registration will become less expensive and it will be possible to apply for registration in one class 'only', with the opportunity to add additional product / service classes for a fee.
  • For applications where only the class heading is used, the scope of protection will be limited to only to these goods/services. In order to ensure protection for all relevant goods, this should be specifically mentioned in the application.
  • The requirement for 'graphic representation' is removed. This opens up the application of innovative form of trademarks
  • Increased focus on combating trade in counterfeit goods copies, in trade or in transit.
  • OHIM, the Office for Harmonisation of the Internal Market, will at the end of the year change its name to the European Intellectual Property Office, or EU IPO. What today formally is known as a CTM, Community Trade Mark, will henceforth be named an European Union Trademark, or EUTM.

 

Change of price structure

OHIM has for a number of years shown a substantial financial surplus. This will now benefit its clients, the applicants, through a reduction in certain fees and a change in the application structure.

Previously, an application automatically included three classes (indicating goods/services), something which has often led to unnecessarily extensive applications as compared to the applicant's actual needs. In the future, it will be possible to submit an application for only one class, with the opportunity, against payment, to add additional classes. The official fees for an application in one single class will be EUR 850 (EUR 900 today for three classes), two classes will be EUR 900 and an application in three classes will amount to EUR 1050.

Renewal fees are also lowered and the official fee for renewal of a one-class registration will be EUR 850, compared with the current minimum fee of EUR 1350.

 

Lists of goods/services

After the decision in the IP Translator-case, the practice regarding scope of protection in registered trademarks has changed. It has previously been a generally held view that a trademark registered using only the class heading will still cover all goods/services listed under each class of the Nice classification database. In the IP Translator-case, it was decided that trademark protection will only include those goods and services that fall literally under the respective wording of the list of goods and services.

Hence, in the futures it will be even more important to clearly identify the various goods/services to be protected, since protection will now only include such goods/services explicitly included in the application and registration.

 

Revision of existing registrations

Owners of Community trademarks with a filing date prior to June 22, 2012, and where the application is filed using class headings, may seek revision to fulfill the demands under the new law. There will be a grace period, running six months from the effective date of the new trademark law, during which the trademark owner may apply to include goods and services, listed in the Nice classification system, in addition to what is mentioned in the class headings. Even if the grace period is not yet in effect, it may be a good idea to address this as early as possible.

 

Elimination of the requirement of graphic representation

With new technologies come new ways to convey a trademark. It has previously been required that a trademark must be shown by way of a graphic representation, such as an image showing a figurative or a sheet music for a sound mark. As long as a trademark can be reproduced in a form that is clear, precise and lasting, the mark may be registered. This opens for such registrations of holograms and motion marks. Perhaps the question of registration of olfactory marks will see a renaissance?

 

Preventing trade of conterfeit goods

One of the major changes will be the focus on action against counterfeit goods in transit through EU countries. Goods in transit through the EU may be stopped, provided that the goods also constitute a trademark infringement in the country of final destination. This means that, for companies with problems of trade in counterfeit goods in countries outside of the EU, it may be beneficial to register their trademark in the EU, even if the product is not actually traded within the EU, as they may then take advantage of the customs regulation and thus stop goods in transit at the EU border.

 

When are the changes to come into force?

On December 15, 2015 the proposed amendments were accepted by the EU Parliament and the law is expected to enter into force early in 2016, probably in February or March.

We will update our website as regards to the dates of the new law and we will naturally also closely monitor the development of the practical aspects of the adjustment of the legislation.

If you have any questions, please get in touch with your contact at Valea.

// Lena Ericsson