Legislation Changes – Developments for the European Trade Mark System

Legislation Changes – Developments for the European Trade Mark System

01.03.2016

On 23 March 2016, just short of the 20th anniversary of the European Community Trade Mark, the system is having its most significant revamp to date. A number of changes will be implemented, ranging from the influential to the trivial.  However, the most significant are:

Name changes – The Office for the Harmonisation of the Internal Mark (OHIM) is being changed to the European Union Intellectual Property Office (EUIPO)  the trade marks themselves will be European Union Trade Marks rather than Community Trade Marks.

Fee changes – Application fees are now applied per class rather than the present fee for the first three classes and an increase for each thereafter.  Renewal fees will also be charged per class.

Renewals due date change – Renewal fees will be due on the specific date rather than the end of the month as currently employed.

Specifications – Continuing with attempts to harmonise classification systems, it has been possible to claim all goods/services within a class by simply using that class heading. This will no longer be allowed and goods/services will need to be clearly specified by a term within its literal meaning.

What can constitute a mark? – Currently a mark must be capable of graphical representation to be accepted.  This will change to remove the ‘graphical’ requirement, which will inevitably lead to a wider range of marks applied for, for example, smells, sounds, movements, etc.  This will take effect on 24 September 2017.  Also, certification marks (e.g. the red tractor mark, or the wool mark) which are currently allowed by the UK IPO but not OHIM, will be allowed.

Infringement – In addition to offering, stocking, importing or exporting packaging or labels to which the trade mark is fixed constituting infringement where use is on similar or identical goods/services, this will now include ‘other security or authenticity features’.  Also, trade marks older than five years must be in use to be relied on for an infringement action.  Finally, in an attempt to help counterfeiting issues, goods in transit within the EU can now be seized and destroyed unless their sale will be lawful in the destination country.

Defences – The ‘own name’ defence will only be available to individuals, not corporate bodies; and use of a trade mark to identify goods/services of others will not amount to infringement so long as it is in line with ‘honest practices’ which has also been further clarified.

Transfer of trade marks – On sale of a company (or undertaking), the transfer of the trade marks will be included except where there is expressed agreement to the contrary.

Other changes relate to the harmonisation of trade mark legal systems and processes across member states who have up to seven years to implement these.

Should you have any questions as to how these changes to EU trade mark law may impact on your business and/or trade mark applications or registrations, please feel free to contact our trade mark attorney, Rebecca Dobson on 01962 600500 or rebecca@chapmanip.com.

 
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