Community Trade Mark Regulation Amendments

Regulation (EU) No. 2015/2424 of the European Parliament and the Council of 16 December 2016, amending the Community Trade Mark Regulation (EC) No. 207/2009, comes into force in part on 23 March 2016. The remainder of the Regulation comes into force on 1 October 2017.
The changes we need to be aware of from 23 March 2016 are as follows:-

Changes in Terms and Names

The terms “Community Trade Mark” and “Community collective mark” are replaced by “European Union trade mark”; “EU trade mark” and “European collective mark”; “EU collective mark” respectively. “CTM” will become “EUTM”.

The term “Community trade mark court” is replaced by “EU trade mark court”.

Throughout the Regulation the words “Community”; “European Community” and “European Communities” are replaced by “Union”.
OHIM will be renamed as the European Union Intellectual Property Office (EUIPO).

Changes in Absolute Grounds Examination

Trade Marks will be refused protection if they are signs which consist exclusively of, (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods.

Trade Marks will be refused protection if they contain or consist of protected designations of origin, geographical indications, protected traditional terms for wine, traditional specialities guaranteed, and/or plant variety rights.

Additions to Grounds for Opposition

A person authorised under the relevant law to exercise the rights arising from a designation of origin or geographical indication can oppose a trade mark application based on a designation of origin or a geographical indication that has already been submitted in accordance with Union legislation or national law, prior to the date of the application, or the priority date claimed, for the EU trade mark.

Opposition Deadlines

The opposition period for EU designations of International Trade Mark Registrations will run from one month following the publication of the designation. It is currently six months. The opposition period of three months remains the same.

Descriptions of Goods and Services – Following the IP Translator Ruling

Prior to the ruling given by the European Court of Justice in the IP Translator case, the practice at OHIM was that where registrations claimed the class headings, all the goods and services in the alphabetical list of the appropriate Edition of the Nice Classification attached to that class were covered. Since the ruling the position is now that a literal interpretation of the description will be taken. This results in the risk that if goods or services are not specifically mentioned, or covered, within the wording of the class heading, the goods or services will not be included. The example given by OHIM is that “football studs” that fall in Class 25, would not be covered by the class heading description “clothing; footwear; headgear”. An amendment would be required to ensure these goods are properly referred to and protected.

As of 23 March 2016, owners of EU trade mark registrations filed prior to 22 June 2012, that use the class heading are given the opportunity to consider the scope of their descriptions and file a declaration at the EUIPO to clarify the goods and services of interest.

It is worth noting that the specific goods or services to be listed need to be covered by the Edition of the Nice Classification that was in place at the time the original filing was made. The deadline for filing the declaration is 23 September 2016. Our clients with Community Trade Mark Registrations will be contacted by us.

Official Fees

At present it is possible to cover up to three classes of goods or services when filing a Community trade mark application. The official fee is 900 Euros. The new fee structure introduced by the EUIPO is a price per class structure. The new official fees will be:

First Class – 850 Euros
Second Class – 50 Euros
Third Class – 150 Euros
Fourth and all subsequent Classes – 150 Euros

This same structure is followed for the renewal of existing registrations.

Search of Existing Community Trade Marks

At present OHIM automatically run a search of existing Community trade marks and send the information to the applicant or their attorneys. The search will now only be done at the request of the applicant or their attorney. We intend to request a copy of the search report so we can assess early on if there are likely to be any challenges to an application during the opposition period, particularly as the search report will still be conducted by the EUIPO and the proprietors of earlier EU trade marks notified as to the existence of a new EU trade mark application. There is no additional charge for this.

Interesting Changes Coming Into Force from 1 October 2017

Certification Marks

The EUIPO are introducing the protection of certification marks. This type of protection is already recognised and offered by the UKIPO. The changes at the EUIPO will enable the proprietor of a certification mark to protect that mark EU wide. A certification mark differs to a trade mark, its purpose is to distinguish the goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of the goods or performance of the services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not certified.

Our clients with existing Certification Marks will be contacted prior to 1 October 2017 so we can look at whether the protection should be geographically extended through the EUIPO.

Graphic Representation

The requirement in Article 4 for a trade mark to be “represented graphically” has been removed. A sign will be allowed to be represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. This means that other forms of technology may be used when filing a trade mark application i.e. audio files, video.

For more information, please contact: