The European Union (EU) Council and Commission, and now the European Parliament, have agreed to proposals for changes being implemented to the Community Trade Mark (CTM) Directive and Regulations.
The CTM system has proved to be a great success since it was introduced in 1996, and these are the first substantive reforms since then. They are aimed at making the CTM regime more efficient, and to further harmonise trade mark registration within the EU.
The more important changes are as follows:
The CTM Office itself (currently known as the “Office for Harmonisation in the Internal Market”, or “OHIM”) is going to be renamed the “European Union Intellectual Property Office”. While this clearly is a much more user friendly name, it is perhaps a little misleading as it will not actually be dealing with all forms of Intellectual Property (it will still only deal with Community Trade Marks and Designs).
The CTM itself is also going to be renamed the “European Union Trade Mark”, which is much more sensible, bearing in mind there is no longer any such entity called the “European Community”.
Finally, the “Community Trade Mark Court” in each Member State will be renamed the “European Union Trade Mark Court”.
Examination & Opposition
The current requirement for CTM applications that the trade mark must be “represented graphically” is to be removed. In future the mark applied for must merely be “capable of being represented in a manner which enables the competent authorities, and the public, to determine the precise subject of the protection afforded”. For example, this could see the filing of sound marks where the sound is actually filed in a non-graphic format.
OHIM, and a few of the Member States’ national Registries, currently issue “ex-officio” search reports (when requested) of potentially conflicting marks on the relevant Register. It is proposed that these “ex-officio” searches will no longer be conducted.
Furthermore, it is proposed that a Ground of Opposition be introduced based on “bad faith” where the Opponent has an earlier trade mark right outside the EU.
Currently, up to 3 Classes can be claimed by a CTM application before additional Class fees have to be paid. It is proposed to change this so that additional Class fees will be paid after the 1st Class (although it is expected that the new 1 Class application fee will be lower than the current 3 Classes fee). The aim is to prevent CTM applications utilising the “3 Classes” option, even when all 3 Classes may not strictly be required.
All application fees will also have to be paid on filing, thus removing the current option of paying them within one month after the application is lodged.
It is understood that Certification CTMs will probably be introduced.