MHC Tech Law: 10 things to know about new EU trade mark rules

15 Feb 2016

The Amending Regulation should make the process of obtaining EU-wide protection for trade marks more streamlined

The amending Trade Mark Regulation comes into effect in the EU next month. Mason Hayes & Curran outlines what businesses affected by this change need to bear in mind.

The widely-anticipated amending Trade Mark Regulation (Amending Regulation), which will overhaul the existing Community Trade Mark (CTM) regime, will come into effect, with a few exceptions, on 23 March next.

The Amending Regulation should make the process of obtaining EU-wide protection for trade marks more streamlined and, in general, easier and cheaper to obtain.

Both existing CTM holders and potential applicants for trade marks under the new regime should note the top 10 changes outlined below and take action to ensure that they are not caught out by some of the amending provisions.

1. Know the new terminology

Under the Amending Regulation there will be some key changes in terminology: Community Trade Marks (CTMs) will become known as European Union Trade Marks (EUTMs), while the Office for Harmonisation in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO).

2. Take action – don’t lose your broader protection

Before June 2012, the OHIM adopted the practice that if the specification of goods or services on a trade mark application included a class heading, the registration covered all the goods or services falling within that class. However, following the ruling in the IP translator case, OHIM amended its practice and required applicants to specify the exact nature of goods and services they seek protection for. The Amending Regulation formalises this practice.

The Amending Regulation also introduces a regime applicable to applications that were registered prior to the introduction of the new practice on specifications.

Owners of existing registrations should check if any of their registrations with a filing date before 22 June 2012 include coverage for all goods and services falling under a particular class heading. If not, they have until 23 September 2016 to specify the exact goods and services covered by their registration. Failure to do so will mean that the registration will be automatically limited to cover only the literal meaning of the words in the class heading.

3. Use the amended fee structure to your advantage

Under the new regime, brand owners who apply for protection in one class only can make savings. Fees for registration in two classes will remain the same, while additional fees will apply for registration in a third class. There are also savings to be made in respect of renewals, oppositions, cancellations and appeal fees.

Smaller businesses, which were previously deterred by fees, should reconsider seeking EU-wide protection for their brands. Furthermore, businesses with a number of national registrations should review their trade mark portfolios and consider if it would be more cost effective to apply for a EUTM and, where relevant, such businesses could also seek to claim seniority for their existing national registrations, thereby consolidating and reducing their portfolio.

4. Watch the clock on renewals

Renewal requests will no longer be accepted up until the end of the month during which expiry occurs. Under the Amending Regulation, renewals for registered marks due to expire on or after 23 March 2016 must be requested prior to the date of expiry.

5. Prepare to register non-conventional marks

From October 2017, the Amending Regulation gets rid of the requirement that a mark must be capable of graphical representation.

This means that brand owners of odour marks and sound marks should, in future, find it easier to register such non-conventional marks as long as the representation of the mark is clear, precise, self-contained, easily accessible, intelligible, durable and objective. However, functional signs (such as colours or sounds) will now be subject to the same prohibitions applied to shape marks.

6. Benefit from greater protection against counterfeits

Holders of EUTMs will now be able to prevent the entry of infringing goods and their placement in all customs situations, including transit, shipment, warehousing, free zones, temporary storage, inward processing or temporary admission. This protection will be available even if the goods are not intended to be placed on the market in the EU.

Trade mark owners with national registrations and counterfeiting difficulties should consider an EUTM registration to obtain this broader protection.

7. Don’t delay on opposition

Currently, a three-month opposition period against international registrations designating the EU commences six months after the application is published. Under the Amending Regulation, however, the opposition period will commence one month after the date of publication.

8. Claim priority at the outset

Priority claims will now be have to be filed together with an application, not subsequently.

9. Be prepared to take advantage of the new EU certification marks

EU certification marks will be introduced in 2017. These marks allow businesses adhering to an institution or organisation’s certification system to use the mark to signify the compliance of their goods or services.

The Amending Regulation provides for the protection of collective, guarantee and certification marks and includes details about the use of such marks and grounds for their revocation and validity.

10. Forget about disclaimers

The practice of using disclaimers in trade mark applications will be eliminated by the Amending Regulation. Disclaimers had been used by applicants to overcome future absolute grounds objections.

The content of this article is provided for information purposes only and does not constitute legal or other advice.

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