Trade marks

European trade mark reform - key changes

The European Union (EU) recently adopted new legislation introducing important reforms to EU trade mark law. The reforms consists of two legislative components:

  • amendments to the Community Trademark Regulations, which come into effect on 23 March 2016
  • a new EU Trade Marks Directive , which will come into effect in EU-member states on 15 January 2019

If you have a Community trade mark, or a UK-registered trade mark which you are using Europe-wide, have a look below at some noteworthy points and changes you should be aware of.

  1. New terminology - Under the reforms, the Community trade mark (CTM) is renamed to European Union trade mark (EUTM). The Office for Harmonization in the Internal Market (OHIM) is renamed the European Union Intellectual Property Office (EUIPO). The new terminology takes effect as of 23 March 2016.

  2. Non-graphical representation - The reforms amend the definition of a trade mark and remove the requirement that a trade mark has to be represented graphically in order to be registered. This change will apply from 1 October 2017 for EUTMs. It will enable applicants to more easily apply for trade marks protecting sound, colour, shapes and movements. If your business uses any marks which have previously been ineligible for trade mark protection due to the graphic representation requirement, consider carefully whether their position has changed in light of the new legislation.

  3. Specifying goods and services in applications - The reforms also introduce new rules on how to specify goods and services in applications. Under previous practice, broad specifications consisting of class headings were deemed to cover all goods and services within that particular class. Under the new rules, broad general class headings are no longer acceptable and only goods and services that fall within their ‘literal meaning’ will be covered. If you have filed for a Community trade mark before 22 June 2012 using class headings, the new legislation allows you a six month grace period within which you can notify the OHIM – now known as the EUIPO – of your intention to specify your appropriate goods and services description. You must file your declaration by 23 September 2016.

  4. Counterfeit goods in transit - By means of customs enforcement, trade mark owners may now be able to prevent the entry of counterfeit goods into the EU territory, even if these are just in transit. However, the holder of the goods may challenge the seizure if they can demonstrate that the EU trade mark owner would not be entitled to prevent marketing and selling of these goods in the country of goods’ final destination.

  5. EUTMs renewals - Under the new law, you must renew your CTMs (or EUTMs from 23 March 2016) by the renewal anniversary date, ie the date of the CTM’s expiry. Previously, renewal fees were expected to be paid at the end of the month during which the expiry of the trade mark occurs.

  6. EU certification mark - In October 2017, an EU certification mark will be introduced as a new type of European-wide trade mark. Certifying institutions will be able to permit the use of the mark to indicate goods or services complying with particular certification requirements or standards.

  7. Revised fee structure - From 23 March 2016, the EUIPO will introduce a new one-fee-per-one-class system for trade mark applications and renewals of EUTMs, which will be accompanied by a new fee structure.

  8. Limitation to 'own name' defence - The 'own name' defence is now largely limited so that only natural persons can rely on it. Businesses can no longer use this defence. You should undertake the necessary clearance searches prior to adopting a trading or company name to ensure that you are not infringing upon relevant prior rights.

  9. Other changes - A raft of other amendments came or will come into force because of these reforms. Among them are changes to:
  • absolute and relative grounds of objection
  • opposition period for EUTM designations of international registrations
  • office proceedings for invalidation and revocation

Read more about the trade mark reforms from the EU Intellectual Property Office.

Please note that this is not an exhaustive list of changes and should not substitute professional and legal advice. For more detailed advice, you should contact a trade mark solicitor or get in touch with Invest NI’s intellectual property advisors.