Community Trade Mark Changes Explained

Community Trade Mark Regulation and Community Trade Mark Directive Changes

A few weeks ago, we posted here that there are some major changes to the Community Trade Mark system coming up in March. We thought you might find a detailed breakdown of changes useful at this EU flagstage.

Both the former Community Trade Mark Regulation and the Community Trade Mark Directive are to be repealed and replaced by new legislation – the first of which comes into effect on the 23th of March 2016. This will be the new Community Trade Mark Regulation which will govern Community Trade Marks (or EU Trade Marks as they will soon be known!).

Definitional Changes

EU-wide trade marks will no longer be referred to as Community Trade Marks (or CTMs). They will now be called European Union Trade Marks or EUTMs.

The same goes for the Office of Harmonisation of the Internal Market (OHIM), which will now be known as the EU Intellectual Property Office (EUIPO). Note that this does not mean any amalgamation with the European Patent Office – which will remain a separate entity.

Price Changes

No longer will 3 classes be available for the standard price of €900. The new EUIPO is trying to prevent scatter-gun style trade mark applications where applicants apply for 3 classes even where they do not intend to operate in those markets.

The new official fees will be:

  • €850 for registration in one class
  • €50 for a second, additional class
  • €150 for each additional class in excess of 2

This means that while it might be slightly cheaper with the changes to apply in one trade mark class, applicants who want to make more extensive trade mark applications will find it more expensive.

Graphical Representation

The requirement that a trade mark must be capable of graphical representation has been scrapped in the new Regulation. While applications for trade marks will still have to be “clear and precise” as to the brand being applied for, the aim is to allow for new technology (such as holograms and digital audio files) to be used in making trade mark applications.

This will mean that, when the Regulation comes into force on the 26th of March, it will be easier to register unconventional marks such as shape marks and olfactory marks such as sound and smell marks.

Interestingly, because the Trade Mark Directive (which directs the manner in which national trade mark laws work (e.g. UK Trade Marks Act 1994)) will only come to effect in 2019, it will be easier to apply for unconventional trade marks at the EUIPO instead of the UKIPO until then.

Nice Classification

In relation to designating the goods and services you want to use a trade mark with, the Regulation seems to have incorporated the recent European IP Translator case.

Article 28 of the new Regulation requires trade mark applicants to be more precise about the goods and services they want to designate. This means you can longer use the general headings of the Nice Classification list – you must be more specific about your products or services.

Own name defence

The own name defence will no longer apply in relation to company names – only individuals will have this defence when the Regulation comes into effect.

Invalidity

A change in relation to invalidity actions will be the permissible evidence of acquired distinctiveness that can be used by the registrant who is defending the action. Previously the registrant could only use evidence of use of the trade mark from before the registration was granted as proof of acquired distinctiveness.

This will now change and a registrant whose trade mark is challenged for invalidity will be
able to rely on evidence of post-registration use of the mark.

New Infringing Act

The Regulation will introduce a new and separate act of trade mark infringement. Parties that manufacture, import or export packaging or labels which bear a registered trade mark will be infringers, in addition to the party that brings a product to market bearing that trade mark. 

Lots of little details but all of them useful to know. Especially for those of you that want to register your EU Trade Marks in the near future.

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