March 2016

Changes to the European trade mark regime

December 2015 saw the publication in the Official Journal of the European Union of Regulation (EU) 2015/2424 amending the Community Trade Mark Regulation. The reform package will enter into force on 23 March 2016.

The above gives rise to the following amendments:

New names:
European Union trade mark, EU Intellectual Property Office (EUIPO)

The European Community is a thing of the past – we have long been a European Union. The Community trade mark will accordingly be called the European Union trade mark, while the Office for Harmonization in the Internal Market (OHIM) in Alicante will be changing its name to 'European Union Intellectual Property Office' (EUIPO). The 'Community trade mark courts' are to be renamed 'EU trade mark courts'.

Revised fees

Fees payable to the EUIPO will be reduced for many procedures, for example for opposition, revocation and appeal proceedings. Renewal fees are also being lowered. Application fees are being raised slightly – instead of the same basic fee for the first three classes, there will be a registration fee for one class and an extra fee for each additional class (as is also the case for trade mark applications to the German Patent and Trade Mark Office).

Option of adapting the lists of goods and services in certain cases

The consequence of the IP TRANSLATOR judgement by the European Court of Justice (ECJ) (case C-307/10, 19 June 2012) is that the list of goods and services must be interpreted according to the literal meaning of the terms used. This case law put an end to the established practice in which a registered trade mark was deemed to cover all the goods or services in a class if it was registered for all the general terms of a particular class, even if some goods or services did not literally fall under the meaning of the generic terms.

For EU trade marks applied for before 22 June 2012 and which are registered for a general term in a class, the new EU trade mark regulation offers an opportunity for the list of goods and services to be made clear and precise by a written sub-mission adding goods and services which do not come under the literal meaning of the general term used at the time of registration. On the OAMI websites, you can find a list of examples of goods and services not covered by the respective class headings by using this link.

The opportunity to adapt lists of goods and services begins on 23 March 2016 and ends on 24 September 2016.

Renewal deadlines

As from 23 March 2016, trade marks need to be renewed exactly ten years after the date of application or the priority date.

The EU certification mark

Applications can be filed for the new EU certification mark introduced by the Regulation. Such marks must be described as such and be capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.

Geographical indications, traditional terms and protection of plant varieties

In future, trade marks providing for protection of designations of origin and geo-graphical indications, and trade marks providing for protection of traditional terms for wine are excluded from registration as EU trade marks. Persons authorised to exercise such rights will be entitled in future to lodge oppositions against any EU trade mark applications that infringe those rights.

The legal text can be found here.

Eisenführ Speiser PartGmbB
Ulrich Sander (Attorney-at-Law, Certified Intellectual Property Attorney)
Tel +49 421 3635-0

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