On Wednesday, 23 March 2016, the new EU Trade Mark Regulation came into force as part of the EU trade mark reform package.
Community trade marks became EU trade marks (EUTMs) and OHIM became the EU Intellectual Property Office (EUIPO). Member States have, in general, until 14 January 2019 to transpose the provisions of the new EU Trade Mark Directive into their national laws.
The reforms bring about a number of changes that will affect both trade mark applicants and proprietors, the most significant of which relate to fees, class headings, goods in transit, company name use and how a sign may feature on the register.
1. Fees
There will now be a new application fee structure, as set out in the table below, centred on a one-class-per-fee system, as opposed to the old system whereby a flat fee covered three classes. A three-class application will now cost a little more. In time, this may help declutter the register since there are likely to be fewer multi-class applications and renewals. If so, this will make it easier to clear new marks.
Fees – Applications
Number of classes | CTM (old system) fee | EUTM (new system) fee |
One class | €900 covers up to three classes | €850 |
Two classes | €900 covers up to three classes | €900 |
Three classes | €900 covers up to three classes | €1,050 |
Fourth and all subsequent classes | €150 | €150 |
There will now also be a reduction in renewal fees, as set out below.
Fees – Renewals
Number of classes | CTM (old system) fee | EUTM (new system) fee |
One class | €1,350 covers up to three classes | €850 |
Two classes | €1,350 covers up to three classes | €900 |
Three classes | €1,350 covers up to three classes | €1,050 |
Fourth and all subsequent classes | €400 | €150 |
2. Changes to class heading specifications
See our previous article. Those who own European trade mark registrations that used the class heading title as shorthand for goods or services falling within that class but not obviously covered by those words need to take action now. An example might be a registration in class 12 for "vehicles, apparatus for locomotion by land, air or water". Previously, this was taken to cover spare parts for cars. Unless action is taken now, it shortly will not.
3. Goods in transit and preparatory acts
Trade mark proprietors should be able to prevent traders from transiting goods or packaging through an EU country's customs procedures en route to a non-EU country where they would infringe trade mark rights in that transit country. However, they cannot do so if the owner of the goods can show that the trade mark owner's rights are not protected in the country of final destination of the goods.
Additionally, trade mark owners will be able to prohibit preparatory acts in relation to the use of packaging, labels or other materials bearing infringing marks. This solves the problem of customs questioning whether they can seize fake labels when there is no registration covering labels per se.
4. Company and trade names
Using a registered trade mark as a trade or company name (or part of such) is to become a specific infringement. This is consistent with the removal of company names from the "own name" defence, which is now limited so that only natural persons can rely on the fact that they are using their own name or address in accordance with honest business practices as a defence to infringement.
It is therefore important to consider appropriate searches prior to the adoption of trading or company names to ensure there are no relevant prior rights.
5. Graphical representation
The Regulation has dispensed with the need for a trade mark to be represented graphically. Instead it requires that it must "be represented on the register in a manner which enables the competent authorities and the public to determine the precise subject matter afforded to its proprietor." This means computer files can now be used for sound or motion marks, for example, which will make registering such marks easier.
However, this change will not be implemented immediately. Rather, offices will have until September 2017 to do so.
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.