United States: What Every Business Should Know About Coming Community Trade Mark Reform

Trademark Owner Action Steps

  • Take advantage of the European Union Intellectual Property Office's new trademark fee structure.
  • Make priority claims based upon earlier national trademark filings at the time of filing of a new European Union Trade Mark application.
  • Identify the goods and services you wish to protect in your European Union Trade Mark application with "clarity and precision."
  • Of particular importance, review your portfolio of existing Community Trade Mark registrations to determine whether each registration identifies with "clarity and precision" the goods and services you wish to protect. If you own a registration issued prior to June 22, 2012 which uses an International Class "heading" to identify your goods or services, take advantage of a one-time only opportunity that expires on September 24, 2016, to request an amendment to obtain an identification meeting the "clarity and precision" standard. Alternatively, consider obtaining a new European Union Trade Mark registration where necessary to ensure an adequate scope of protection.

Significant changes are coming to the Community Trade Mark or "CTM" starting in 2016. Since 1996, the CTM has provided a unitary trademark registration system to protect trademarks within the European Union, which now has 28 member countries. The registration system has been administered by the Office for Harmonization in the Internal Market or "OHIM" in Alicante, Spain. The CTM has gained wide commercial acceptance; OHIM issues "almost" 100,000 CTM registrations annually.1

Notwithstanding its success, the Community Trade Mark is undergoing significant changes starting March 23, 2016.2 Among the changes you should be aware of are the following:

New Name: The Community Trade Mark – the CTM – changes its name to the European Union Trade Mark – the EUTM.

New Agency Name: The Office for Harmonization in the Internal Market – OHIM – also gets a new name, the European Union Intellectual Property Office – EUIPO.

New Fee Structure:

  • Application Fees: OHIM's prior fee structure for new EUTM applications (i.e., €900 for an electronic application covering up to three International Classes and €150 for each additional class) is ended. EUIPO's new application fee structure (i.e., €850 for a single class electronic application, €900 for a two class application, and €150 for each additional class) may result in cost savings and should discourage unnecessary multi-class trademark applications.
  • Registration Renewal Fees: OHIM's prior fee structure for registration renewal fees (i.e., €1,350 for an electronically renewed registration covering up to three International Classes and €400 per each additional class) also is ended. EUIPO's new registration renewal fee structure tracks the new EUTM application fee structure (i.e., €850 for a single class electronic application, €900 for a two-class application, and €150 for each additional class), and may result in significant savings to trademark owners.

Application Formalities: The EUTM reforms include important changes for trademark application formalities, including the following:

  • Goods and Services Identification: In accordance with the 2012 IP TRANSLATOR case,3 the former practice of allowing claims of class-wide rights (i.e., all the goods or services falling within the scope of a given International Trademark Class under the Nice Agreement) based upon the use of one of the established International Class "headings" is no longer allowed. Rather, the applicant must identify the goods and services for which the mark is to be protected "with sufficient clarity and precision to enable competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought." The applicant may still use a "class heading" to identify the subject goods and services, but that identification must meet the "clarity and precision" requirement. For example, if the registration identified the goods using the International Class 25 heading – "Clothing, footwear, headgear" – this might well identify sandals or boots with sufficient "clarity and precision," but might fail to do so for bow ties.

    Further, it should be particularly noted that the owner of a Community Trade Mark registration issued prior to June 22, 2012 (effectively, the IP TRANSLATOR decision date) is allowed until September 24, 2016, to file a request with EUIPO to amend such registration to change a "class heading" identification of goods and services to an identification complying with the new "clarity and precision" standard. Failure to amend will limit the scope of such pre-June 22, 2012 registrations to goods and services which the "class heading" description identifies with "clarity and precision," potentially making such a trademark registration of little or no value to the owner. Returning to the prior example, a trademark owner selling bow ties whose mark is registered for "Clothing, footwear, headgear" (i.e., the International Class 25 heading) might find the registration no longer protects bow ties unless amended to explicitly identify such goods.
  • Graphic Representation of the Mark: Presently, a trademark owner's CTM application must include a graphic rendering of the trademark. This graphic representation requirement has made it difficult to obtain registration for non-traditional marks such as scent and sound marks. Under the CTM reforms, this requirement is to be loosened, albeit subject to the requirement that the mark still must be represented in a manner allowing for the determination of "the clear and precise subject matter of the protection." Additional law implementing this particular reform is to be issued.
  • Priority Claim: Previously, an applicant could make a priority claim based upon an earlier national filing within two months of the filing of a new CTM application. Under the reformed EUTM system, a trademark applicant asserting priority must do so at the time the application is filed.

Grounds for Opposing an EUTM Application: The grounds for opposing a European Union Trade Mark application are expanded and clarified to include the following:

  • Designations of Origin and Geographical Indications: An EUTM application now may be opposed based upon rights in certain recognized indicia of geographic origin, namely:
  1. Protected Designation of Origin – "covers agricultural products and foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how."
  2. Protected Geographical Indication – "covers agricultural products and foodstuffs closely linked to the geographical area. At least one of the stages of production, processing or preparation takes place in the area."4
  • Reputation: European Union trademark law provides the owner of an "earlier" trademark with a reputation greater trademark protection (e.g., the mark may enjoy protection even where a likelihood of confusion is not established). Such enhanced rights have long been the basis to oppose a CTM application for an identical or similar mark, but only for "goods and services which are not similar." The coming CTM reforms bring opposition practice into line with infringement practice;5 the owner of an earlier trademark with a reputation now may oppose an EUTM application for an identical or similar mark "irrespective of whether the goods and services ... are identical with, similar to, or not similar to" those of the earlier rights owner.

Certification Marks: A unitary European Union certification mark system is being introduced. A certification mark is used by the mark owner (who may not be engaged in offering the goods and services being certified) to indicate that the goods and services of another meet an established criteria respecting "material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin." Commonly encountered examples include a mark showing that a food product is "Kosher" or the ENERGY STAR mark for energy efficient appliances. Additional law implementing the new certification mark system is to be issued.

These and other changes are coming as the Community Trade Mark becomes the new European Union Trade Mark.

Footnotes

1 See https://oami.europa.eu/ohimportal/en/trade-marks (Feb. 8, 2016).

2 Regulation (EU) 2015/2424 of the European Parliament and the Council (Dec. 16, 2015).

3 Case C-307/10, Chartered Inst. of Pat. Att'ys v. Registrar of Trade Marks, [2013] CEC 361, [2013] RPC 11 (C.J.E.U. June 19, 2012) ("IP TRANSLATOR").

4 See http://ec.europa.eu/agriculture/quality/schemes/index_en.htm (Feb. 10, 2016).

5See Case C-292/00, Davidoff & Cie SA v. Gofkid Ltd., [2003] ECR I-389; [2003] WLR 1714 (C.J.E.C. Jan. 9, 2003).

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.