After 20 years, our old and perhaps unclear (but meaningful) designation “OHIM” has changed into “EUIPO”, more ordinary, self-explanatory, and honestly, more difficult to pronounce: European Union Intellectual Property Office. It all happens from 23 March 2016 on, when the amended European Union Trade Mark Regulation (EUTM) No. 2015/2424 entered into force, reforming the CTM towards a modern and streamlined system. The most controversial changes are related to classification of goods and services.
Article 28.8 provides that after 24 September 2016, class headings will take their literal meaning to meet the requirement for 'clarity and precision' required by CJEU's decision identified as “IP Translator”. This is the end of the principle “class heading cover-all” and certain EUTMs will see a limited scope of protection. This is why holders of EUTMs filed before 22 June 2012 (the date of IP Translator) claiming a complete class heading will have the opportunity to modify their specifications by filing a declaration prior to 24 September. It is required that such a declaration specify the goods intended to cover the actual scope of protection.
Unfortunately, the current practice on article 28.8 declarations is all but clear and the EUIPO is currently unable to provide directives to help users. A new fee structure is in force with lower fees for one class and two class applications, and higher fees for three class applications and more. This should discourage TM cluttering in auge under the old system. Some of the new rules introduced by the regulation will enter into force on October 1, 2017, when, for instance, a new EU Certification Mark will be introduced. Rights conferred by EUTMs have been also reviewed including a new version of Article 9 that, inter alia, provides better tools against goods in transit in the EU economic area. The EU TM Regulation contains many further provisions and, upon request, we will be pleased to get deeper into this matter.