Changes in the Trademark Law of the European Union

The trademark law in the European Union and OHIM (Office for Harmonization in the Internal Market), which is responsible for Community trademarks and Community designs, underwent some changes, which came to effect today, March 23rd, 2016. 

Below are some of the most important changes in the trademark law of the European Union:

Name changes

On March 23rd 2016, the Office for Harmonization in the Internal Market (OHIM) became the EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE (EUIPO).

The term "Community trade mark" (CTM) changed into "EUROPEAN UNION TRADE MARK" (EUTM).

Fee changes

The official basic fee for the application of a European Union trade mark is reduced from 900 EUR to 850 EUR.  However, the basic fee now covers only one class of the Nice classification. This is a cosequence of change from the three-class fee system into the one class fee system. According to the new scheme the fee for the second class is 50 EUR, while the fee for every subsequent class is 150 EUR. 

The official renewal fees are significantly reduced and will be equal to the application fees in the future. The renewal fees have to be paid not later than on the day of expiry of the protection. Until now, they were payable by the end of the last day of the month of expiry.

The official fees for opposition, cancellation and appeal are slightly reduced.

Search report only upon request

The EUIPO will issue a search report on the basis of prior EU trade marks only if such a search report is requested.

Waiver of the requirement of graphical representation 

From October 1st, 2017, the requirement of graphical representation of a EU trade mark will not be in force any more. Presumably, it will become possible to register trade marks of new types, namely acoustic trade marks, holographic trade marks, and similar. 

New European Union Certification Mark 

On October 1st, 2017, European Union certification marks will be introduced for goods and services complying with certain certification requirements (quality seals). The Applicant of a European Union certification mark has to submit regulations governing the rules of use of the certification mark.

Supplementation of the list of goods and services

In connection with lists of goods and services it was accepted that the heading of a Nice class in the list of goods and services is only acceptable if it is clear and unambiguous. If the entire heading of a Nice class is included in the list of goods and services, the scope of protection of the trade mark will no longer include all goods or services that belong to the respective Nice class, but only those goods or services that are covered by the literal meaning of the heading of the class. To give an example: The heading of Nice class no. 15 is "musical instruments". Some goods not being musical instruments in the literal sense, however, also belong to this class, e.g. music stands. Music stands are NOT covered by a European Union trade mark which is registered only for "musical instruments" in Nice class no. 15. Hence, a clear and precise designation of the goods and services for which the protection of the trade mark is sought is essential. Because this rule could represent damage for the owners of existing trade marks, it is possible for trade marks filed for before June 22nd, 2012 in which only the class heading is included, to file a declaration that this class heading also covers goods and services not literally included in the meaning of the class heading. Such declaration must be filed before September 24th, 2016. If you have such case, please contact us so we can take care of this as soon as possible. 

In case you have any questions regarding new rules regarding European Union  trade marks, we are at your service.

We wish you a successful spring!