In April 2015 the Commission, the European Parliament and the
Council reached a provisional political agreement on the trademark
reform package. This will lead to major changes in the trademark
law of the European Union and its member states when it is
implemented. The package has to be put to a final vote by the
European Parliament and could come into force in the beginning of
2016. The changes in the member states will need to be implemented
nationally within respective deadlines. The final drafts of the
regulation and a directive can be accessed here:
The regulation will bring some major changes to the European
trademark system, starting with a rebrand of the "Community
Trademark" into "European Union Trade Mark" and of
the "Office for Harmonisation in the Internal Market"
into "European Union Intellectual Property Office". The
directive will lead to a much stronger harmonisation of the
national trademark laws and the legislation concerning the European
Union trade mark. Some of the changes are the following:
1. Graphic Representation is deleted
Obtaining protection of alternative trademarks, like sound marks
and trademarks consisting of smell (olfactory mark), is becoming
more relevant. Therefore, the requirement of "graphic
representation" is deleted from the criteria for
registrability of a European Union Trade Mark. Presently a
trademark can only be registered, if it can be represented
graphically. Sound marks can be described with the help of notes
and indication of special instruments. However, with olfactory mark
this is more problematic. In the future a sign will be registrable
as a European Union Trade Mark, if it can be represented in any
appropriate form using generally available technology as long as
the representation is clear, precise, self-contained, easily
accessible, intelligible, durable and objective.
2. Specification of goods and services
The applicant of a trademark will have to specify the goods and
services of a trademark more clearly. Trademark protection will
only include those goods and services that fall literally under the
respective wording of the list of goods and services. The previous
practise of the Office made it possible to cover all goods and
services in a specific class by just naming the class headings.
Owners of EU trademarks which cover class headings and which were
applied for before 22 June 2012 will have a 6 months grace period
to declare whether they intend to seek protection at the time of
filing beyond the literal meaning of the class heading. The grace
period will run from the date of entry into force of the new
3. Goods in Transit
The rights of EU trade mark holders will be strengthened. For
example it will become easier to act against preparatory acts of
trademark infringement. Moreover, the right holder will have better
means to stop the transit of goods that bear essentially identical
signs without their authorisation, even if these goods are not for
circulation within the European Union. However, a possible defence
against such actions is the proof that the respective trademark is
not protected in the country of final destination of the goods.
4. Only one class covered in basic fee
The cost structure will be amended. The basic filing fee and the
renewal fee of a European Union Trade Mark will only cover one
class. The official fee for the application for one trademark in
one class shall be EUR 850, if filed electronically. The fee for
the second class will be EUR 50 and each additional class fee will
be EUR 150. Presently, the basic filing fee is EUR 900 and covers
up to three classes whereas the fee for each additional class is
The renewal fees will be identical to the filing fees in the
future. Presently, the renewal fee is EUR 1350 if a request for
renewal is filed electronically for the first three classes,
whereas the fee for each additional class is EUR 400. The new
trademark package will lead to a significant reduction of costs in
renewal fees for European Union Trade Marks.
Zacco will be monitoring the further process of the European
Trademark Reform and revert with more information. Contact your
local Zacco consultant for more information.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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