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Changes to European Trade Marks

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 March 2016.

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 somewhat.

• 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 application.

• 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 smells.

• 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 filing.

• 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 declaration.

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