Late December 2015 saw the publication of a European Union Trade
Mark Directive and Regulations that introduces a number of changes
to the Community Trade Mark system, which will take effect from 23
The first point to note is that the unitary EU trade mark will
henceforth be known as a "European Union Trade Mark"
(EUTM) – rather than "Community Trade Mark" (CTM) -
and the responsible Office will be renamed the European Union
Intellectual Property Office (EUIPO) – rather than the Office
for Harmonisation in the Internal Market (OHIM). The EUIPO is also
responsible for the unitary EU Design Registration system, but does
not have any involvement with European Patents, either under the
current European patent system or the propose unitary patent that
is planned to come into being in the near future.
Amongst the most significant practical changes introduced by the
new rules are the following:
A separate official fee will be
payable for each class of goods or services to be covered in an
EUTM application, rather than the basic application fee covering up
to three classes as at present. The application fee will be
slightly less than the current fee, meaning that applications in
just one class will be slightly less costly.
Renewal fees will also be reduced
Search reports from the EUTM Register
will not automatically be sent to all applicants, but only to those
that have opted to receive such reports.
It will still be possible to submit
applications with specifications of goods or services comprising
the "class headings" given in the International
Classification, but these will be interpreted in accordance with
the literal meaning of the terms used, and will not be taken to
cover all of the goods or services in the alphabetical list for
classes concerned. It will therefore be important to itemise
explicitly all goods or services of interest when preparing an
It will in future be possible to
obtain EU registrations in respect of "certification
marks", as has long been the case in the UK. These marks are
used by members of trade associations and the like to signify that
their products or services meet certain standards.
The present requirement for a trade
mark to be graphically represented in an application will be
replaced by the more lenient requirement that it be precisely
identified. This change is expected to make it somewhat easier to
obtain registration of non-conventional marks, such as sounds or
The present practice of allowing
priority to be claimed from an earlier national trade mark
application within two months of the filing date of an EUTM will
cease; instead, priority will have to be claimed at the time of
Where an EUTM is opposed on the basis
of an earlier mark that has been on the register for more than five
years, the opponent may still be required to submit proof of use,
but the period in which that use has occurred will in future be the
five years up to the filing date of the opposed application, rather
than its publication date.
In addition to the above, the owners of any EUTM applications or
registrations that were filed prior to 22 June 2012 and comprise
"class headings" will have until 24 September 2016 (ie
six months from the implementation of the new trade mark law) to
file a declaration indicating that the class heading should retain
the current broader interpreted of covering all goods or services
in the full alphabetical list for the class concerned, otherwise
the new narrower interpretation in accordance with the literal
meaning of the words used will be applied retrospectively. We will
contact any of our clients who own trade marks that are affected by
this change regarding the possibility of filing such a
Originally published 25 February 2016
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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