The new Trade Mark Directive and the amended Trade Mark Regulation

Posted on: January 11th, 2016

On 23 and 24 December 2015 respectively, the new Trade Mark Directive (EU) (2015/2436) and the amended Trade Mark Regulation (EU) No 2015/2424) were published as part of the EU trade mark reform legislative package.

The Trade Mark Regulation will come into force on 23 March 2016.  The main areas for consideration are set out below:-

  • Change in name for the Office and CTMs – The OHIM will now be called the European Union Intellectual Property Office (EUIPO).  Community trade marks will now be called European Union Trade Marks (EUTMs).
  • Change in fee structure – The “three classes for the price of one” arrangement is gone.  Instead, each class will carry a separate fee.  This applies to filing fees and also renewal fees.
  • Change in renewal fee due date – Renewal fees must be paid by the renewal date, rather than at the end of that month.
  • Amendments to the goods / services for CTMs filed before IP Translator – Before the ruling in the IP Translator case, a class heading was interpreted as covering all possible goods and services in that class. Implementing the IP Translator decision, the new provisions will require trade mark owners to ensure sufficient clarity and precision in relation to the goods and services for which protection is sought. General indications in class headings may be used, provided they comply with the requisite standards of clarity and precision, and will include all goods/ services clearly covered by the literal meaning of the indication or term. The aim of this requirement is to guide applicants to give their trade mark applications more thought as to precisely what they should cover. This is a big change and we have issued a separate briefing note on this.  If you have not received this yet, you can view it here.
  • No graphical representation necessary from 2017 – It will no longer be necessary to file a graphical representation of the trade mark.  This means that it will be easier to file non-traditional trade marks such as sound marks and movement marks. This change comes into effect on 24 September 2017.
  • Change in proof of use period for oppositions – Currently an opponent who owns a trade mark registration which is over 5 years old can be required to file proof of use of that trade mark for the 5 year period ending on the publication date of the opposed trade mark.  This period for which proof of use can be required will change to 5 years ending on the filing or priority date of the opposed trade mark, whichever is the earlier.
  • Shorter waiting time for International Registration opposition periods – The start date of the opposition period for CTM designations of International Registrations will be one month from the date of publication, instead of six months.

Certification trade marks can be filed as EUTMs from 2017 – A third category of trade mark will been introduced from 24 September 2017.  Certification trade marks protect trade marks which certify the characteristics of the goods or services, rather than those which act as an indicator of trade origin.

If you would like any further details of the changes to either the Trade Mark Regulation or the implementation of the Trade Mark Directive then please contact Mark O’Halloran.