2016 European Trademark Law Reforms

| Published on 22 Jan 2016

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Major 2016 European Trademark Law Reforms are expected to come into force throughout the first half of 2016. The general rationale thereof is to make the European trademark system more accessible and less expensive, and, to reflect ongoing commercial changes.

Below is a non-exhaustive summary of the most notable reforms.

1.    Name changes

The “Community Trade Mark” will change its name to the “European Union Trade Mark” (“EUTM”) whilst the “Office for Harmonization in the Internal Mark” (“OHIM”) will change its name to the “European Union Intellectual Property Office” (“EUIPO”).

2.    Fee changes

Currently, the basic CTM filing fee covers 3 classes of goods and services. An additional fee is due per class over and above the first 3 classes. This will change to a one-fee per class system.

3.    Identification of goods and services

Right-holders of a CTM who obtained their registrations prior to 2012, that is prior to the IP Translator Case, who have listed Nice Class Headings as their CTM’s coverage, will have a six-month period within which, after formal implementation of the reforms, to file a declaration specifying the good and services to be covered. If no declaration is filed, it will be assumed that the registration covers only the goods and services within the literal meaning of the Nice Class Heading.

It is to be noted that applications filed after the 22 June 2012, were already subject to the requirement of specifically indicating the goods and services to be covered within each class.

Furthermore, henceforth, the goods and services in a EUTM application must be identified with "clarity and precision" based on the "natural and usual meaning" of the terms.

4.    Graphical Representation

The requirement for the application to include a graphical representation of the mark will be eliminated. A mark need “only” be represented in a sufficiently clear and precise manner to enable the competent authorities and the public to determine the extent of the trademark rights. This should facilitate the registration of non- traditional marks such as holograms and scent marks.

5.    Administrative Remedies for Revocation and Invalidity

All member states are to implement administrative procedures and remedies for the revocation and declaration of invalidity against national marks. This should be a less expensive and quicker alternative to pursuing revocation and invalidity in a national court.

6.    Searches

OHIM conducts searches of prior CTM registrations for each application. No such searches shall be carried out by the EUIPO.

7.    Geographical Indications

An earlier designation of origin or geographical indication will be considered an absolute ground for refusal.

8.    Certification Marks

The new regulations will provide for the registration of certification marks.

9.    Acquired Distinctiveness

Descriptive mark will not be refused if they have acquired distinctiveness prior to the filing date. Registered marks will not be invalidated if they have acquired distinctiveness prior to the commencement of the invalidity action.

10. Refusal based on reputation

The reform-package makes it a mandatory requirement for member states to refuse registration or declare invalidity if an earlier mark has a well-known reputation and the use of the later mark would be detrimental to distinctiveness of the earlier mark.

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