Recent and upcoming changes concerning Community trademarks (CTM).

Key amendments to the Community trademark framework include:

  • Your CTMs become “European Union trademarks” and OHIM becomes “European Union Intellectual Property Office”.
  • You will pay less for a trademark registered for 1 class, but you will pay more for 3 classes and above.
  • If you named only class headings when determining the scope of goods and services to be covered by your trademark before 22 June 2012, you may – within the next six months – list the exact goods and services for which you intended protection. Otherwise, your trademark will cover only goods or services clearly covered by the literal meaning of the class heading (this reflects ECJ judgment C-307/10 – “IP Translator” imposing the “what you see is what you get” rule).
  • You are able to oppose preparatory actions preceding the infringement, as well as use of your trademark in a trade name.
  • You may make a claim to transfer the trademark to you if your agent registered it in its own name.

The above took effect on 23 March 2016. The following will enter into force in October 2017:

  • There will be no need to present the trademarks graphically. It will be enough if they are capable of being entered into a register in an unambiguous way. This opens the way to filing e.g. sound files.
  • Certification trademarks will be introduced. They will allow adherents to the certification system to use the trademark as a “quality” sign.

Above amendments were introduced by the Regulation (EU) No. 2015/2424 of the European Parliament and the Council.