23 March 2016 – key date for trade mark owners

New Regulation

  • Regulation (EU) No 2015/2424 entered into force on 23 March 2016 (the “Amending Regulation”).
  • The Amending Regulation seeks to streamline proceedings and increase legal certainty.

Summary of main changes

  • New ‘European Union trade mark’ (‘EU trade mark’)
    • The ‘Community trade mark’ (‘CTM’) has been replaced by the ‘European Union trade mark’ (‘EU trade mark)’.
  • New ‘European Union Intellectual Property Office’ (‘EUIPO)’
    • The ‘Office for Harmonisation in the Internal Market’ (‘OHIM’) has been renamed and is now called the ‘European Union Intellectual Property Office’ (‘EUIPO’).
  • Designation and Classification of goods and services
    • The Amending Regulation codifies the current practice for trade marks filed after the judgment in the “IP TRANSLATOR” case (the Court of Justice of the European Union (CJEU) case C-307/10 of June 2012) where class headings of the Nice Classification used in applications have been interpreted literally by OHIM (the use of class headings will only provide protection for goods/services covered by the literal meaning of the terms).   
    • As the Amending Regulation will extend the current practice to trade marks filed before the judgment in the “IP TRANSLATOR” case, trade mark owners should consider whether a declaration under Article 28(8) to adjust the specification of their marks should be filed. Under Article 28(8) owners of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may 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 heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.
    • The declaration under Article 28(8) must be filed by 24 September 2016, and must indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the trade mark owners intention. Where such a declaration is not filed by 24 September 2016, such EU trade marks will be deemed to extend only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.
  • Revision of fees payable to EUIPO
    • New one-class-per-fee system
    • Reduction in renewal fees.
  • Changes in the areas of examination, opposition, cancellation and appeal proceedings and in the areas of absolute and relative grounds of refusal.
  • The following provisions contained in the Amending Regulation will have to be developed by secondary legislation and will only come into force in late 2017 (21 months after the date of publication (24 December 2015) of the Amending Regulation
    • New European Union (EU) certification marks – certification marks will allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with the certification requirements.
    • Removal of the graphical representation requirement - signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Conclusion:

Owners of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class should review their portfolios and consider whether a declaration under Article 28(8) to adjust the specification of their marks should be filed as the declaration will have to be filed within the transitory six-month period.