Some of the most significant changes to the trademark law system in the European Union since its establishment in 1996 went into effect earlier this year. Brand owners should be particularly aware of the main changes outlined below:
The most visible reform involves changes in nomenclature: As of March 23, 2016, the Office for Harmonization in the Internal Market, the trademark registry for the European Union, is known as the EU Intellectual Property Office. And the Community trade mark, which provides protection in all 28 EU member states, is now known as the European Union trade mark.
The fee structure for filing EUTM applications is also changing. Previously, applicants could file one application covering up to three “classes,” or categories, of goods and services, for 900 Euros. This three-for-one pricing structure often incentivized applicants to file for more classes than necessary. The reforms introduce a tiered fee structure: one class of goods or services for 850 Euros, two classes for 900 Euros, and three classes for 1,050 Euros. This tiered structure may help reduce clutter on the registry, as brand owners will now think twice before applying to register in more than one class. Renewal fees for existing trademark registrations have also been reduced, from 1350 Euros to 850 Euros for one class, with fees for additional classes following the same structure as that of application fees.
Starting in October 2017, EUTM applicants will no longer have to represent their marks graphically. This change opens the door to possible registration of non-traditional marks, such as scent or sound marks. But, it remains to be seen how the EUIPO will interpret the new language that replaces the graphic representation requirement, as the new laws mandate that any application 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.”
The reforms also codify the June 2012 ruling by the Court of Justice of the European Union, Chartered Institute of Patent Attorneys v. Registrar of Trade Marks Case – 307/10 (known as the ”IP Translator” decision). The IP Translator decision ruled that EU trademark registrations with class heading language were deemed to cover only those goods and services falling within a literal interpretation of the class heading (i.e., what you see is what you get).
“Class headings” describe in broad terms the nature of the various classes of goods and services under the Nice Classification system covering trademark applications. For example, the class heading for a class 9 application (the class that includes downloadable software) is “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data-processing equipment, computers; computer software; fire-extinguishing apparatus.” Prior to the reforms, an application with this class heading language would have been interpreted liberally, such that a brand owner could claim rights for all goods falling under class 9, even if not specifically listed. With the new reforms, if a certain good or service is not explicitly listed in the description, it’s deemed not covered, despite the inclusion of any broad class heading language. This being said, owners of EUTMs filed before June 22, 2012, that include class heading language, now have an opportunity to add specific goods and services to reflect those actually provided under the mark. EUTM owners have until September 24, 2016, to make such changes. Brand owners should review their EU trademark portfolios and consider taking advantage of this opportunity to ensure the broadest protection possible.