EU trade mark reform is finally happening, as on 15 December 2015 the EU trade mark reform package was adopted by the European Parliament.

On 24 December 2015, the final text of the new EU Trade Mark Regulation was published in the Official Journal of the EU (its full title being “Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)”). The EU Trade Mark Regulation will enter into force on 23 March 2016, except for a few provisions, which will not enter into force until 1 October 2017.

The final text of the new Trade Mark Directive was published on 23 December 2015 in the Official Journal of the EU (its full title being “Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks”) and entered into force on 13 January 2016. The EU Member States have three years to transpose the Directive into their national laws. For the administrative invalidation and revocation proceedings, however, the Member States have until 15 January 2019 to transpose the Directive.

Short summary of some important changes

  • Class headings: codification of IP Translator

The CJEU IP Translator decision (C-307/10) is codified, meaning that the goods and services for which the protection of the trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought. Use of class headings will be interpreted as including only the goods or services clearly covered by the literal meaning of the term. Owners of trade marks applied for before 22 June 2012 (i.e. the IP Translator case) will be able to declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the class.

In practice, trade mark owners will be given a six-month grace period (between 23 March and 23 September 2016) in which to make a declaration to the EU Intellectual Property Office (the new name for the OHIM). In this declaration, trade mark owners can set out additional goods and services not covered by the literal meaning of the class heading used in their registrations. If trade mark owners fail to do this, the trade mark registrations will be limited to those goods or services clearly covered by the literal meaning of the term of the class heading, and will no longer cover the other goods and services not clearly covered by the literal meaning of the class heading.

A communication about this will be published by the EU Intellectual Property Office.  

  • Reduction of the fees: one fee per class

Upon entry into force of the amended Trade Mark Regulation, EU trade mark owners will have to pay a fee for each individual class, instead of one fee for three classes. This will result in a reduction of the fees due for the registration of an EU trade mark, from EUR 900 to EUR 850 if the trade mark is filed for goods and services in one class. In this instance, the renewal fee will decrease from EUR 1,350 to EUR 850. For the whole fee structure, click here.

EU Member States will be able to implement a similar fee reduction at a national level, based on the new Trade Mark Directive.  

  • Abolishment of the requirement that a trade mark has to be capable of being represented graphically

The current requirement that a trade mark has to be capable of being represented graphically in order to be registered is being abolished. This should allow for greater flexibility when registering trade marks, in line with CJEU case law.  

  • Changes to invalidation and revocation proceedings

National trade mark offices of the Member States will have to introduce administrative proceedings for revoking and invalidating trade marks by 15 January 2019.  

  • Strengthening fight against counterfeit goods in transit

By means of customs enforcement, trade mark owners will be able to prevent the transit of counterfeit goods through the EU. To challenge the seizure, the holder of the goods will need to demonstrate that the EU trade mark owner would not be entitled to prevent the marketing of the goods at issue in the country of final destination.