From 23 March 2016, brand owners seeking trademark protection throughout the European Union (“EU”) will benefit from a number of changes which are designed to make the application process quicker, cheaper and easier to obtain. This article considers what these changes will mean for existing Community Trade Mark (“CTM”) holders and future EU trade mark applicants including potential savings on fees, easier routes to registration for non-conventional signs and actions to be taken to ensure a continuation of full protection.
The widely anticipated amending Trade Mark Regulation which overhauls the existing Community Trade Mark regime will take effect from 23 March 2016 (with a few exceptions).
Know the new terminology
Under the amending Regulation, CTMs and the Office for Harmonisation in the Internal Market ("OHIM") will become known as "European Union trade marks" ("EUTMs"), and the "European Union Intellectual Property Office" ("EUIPO") respectively.
Take action - don’t lose your broader specification protection
The amending Regulation codifies a practice of OHIM that class heading specification will be deemed to only cover those goods or services covered by its clear meaning of a class heading, not all goods and services covered within that particular class.
As a result, the owners of any existing EUTMs which have full class heading coverage and a filing date prior to 22 June 2012 will be given a six month grace period to file a declaration indicating that their intention at the time of filing was to obtain protection beyond the literal meaning of the class heading(s) used in the original application form.
Use the amended fee structure to your advantage
Brand owners seeking protection in one class only can make savings on EUTMs. The same fee for registration in two classes will continue and additional fees will apply for registration in a third class. There are also savings to be made in respect of renewals, oppositions, cancellations and appeal fees.
Smaller businesses who were previously deterred by fees should reconsider seeking EU wide protection for their brands. Furthermore, businesses with a number of national registrations should review their trademark portfolios and consider if it will be more cost effective to apply for an EUTM and, where relevant, claim seniority for existing national registrations thereby reducing the portfolio.
Watch the clock on renewals
Under the amending Regulation, renewals will have to be requested prior to the date of expiry and not the end of the month during which expiry occurs, as under the current policy.
Prepare to register those non-conventional marks
The amending Regulation disposes of the requirement that a mark must be capable of graphical representation from October 2017.
This means that brand owners of odour marks and sound marks should find it easier to register such non-conventional marks going forward as long as the representation of the mark is clear, precise, self-contained, easily accessible, intelligible, durable and objective. However, functional signs (such as colours or sounds) will now be subject to the same prohibitions applied to shape marks.
Greater protection against counterfeits
EUTM registrants will be able to prevent the entry of infringing goods and their placement in all customs situations incuding transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission, even if the goods are not intended to be placed on the market in the EU.
Trademark owners with national registrations and counterfeiting difficulties should consider an EUTM registration to obtain this broader protection.
Other notable changes
The opposition period of three months against international registrations designating the EU will now commence one month after the date of publication of the application, instead of the current regime of commencement six months after publication.
The practice of using disclaimers in trademark applications in order to overcome future absolute grounds objections will be eliminated.
The amending Regulation codifies the current practice derived from case law in regards to invalidity proceedings based on absolute grounds.
A new ground of opposition and cancellation will be introduced on the basis of both Protected Designations of Origin and Protected Geographical Indications.
Priority claims will now be have to be filed together with an application, not subsequently.
European Union certification marks, which 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, will be introduced in September 2017.
The amending Regulation should make the process of obtaining EU wide protection for trade marks more streamlined and in general easier and cheaper to obtain.
Nonetheless, existing CTM holders and potential applicants for EUTMs should take note of the changes outlined above and take action to ensure that they are not caught out by some of the amending provisions.