New legislation which will overhaul the Community Trade Mark regime takes effect next month when the EU Trade Mark Regulation No. 2015/2424 comes into force on 23 March 2016. The purpose of the amendments is to make the trade mark registration system in the EU cheaper, quicker and more streamlined.
The reforms have been a long time coming and will make a number of important changes to EU trade mark law which brand owners need to be prepared for sooner rather than later.
What is the Community Trade Mark system?
The Community Trade Mark (“CTM”) system is a unified trade mark registration system which means that one registration provides protection in all Member States of the European Union. A CTM registration is enforceable in all Member States.
Key changes for existing CTM holders and potential applicants
- The CTM will be renamed the European Union Trade Mark (“EUTM”) while the Office for Harmonization in the Internal Market will be renamed the European Union Intellectual Property Office.
- The current “three classes for the price of one” arrangement is being replaced by a “one class per fee” system – this means that brand owners who seek protection in one class can make a saving which will benefit small and medium sized businesses. The EUTM application fees for two classes are the same under the old and new system, with additional fees applying for registration in more than three classes.
- Trade marks will no longer need to be represented graphically provided they are clear and precise.
- Goods in transit through the EU will be able to be seized if they infringe EUTMs, even if those goods are not targeted at EU consumers, unless the infringer can prove that there is no trade mark infringement in the country of final destination.
- It will not be possible to prevent the use of, or invalidate, a later EUTM if, at the filing date, the earlier EUTM could have been revoked for non-use.
- The "own name" defence will be restricted to natural persons and will not be available for the use of a company name.
- Preparatory acts, such as the distribution and sale of labels, packaging and similar items that may subsequently be combined with infringing products, will potentially be infringing acts.
- Class heading terms in existing EUTMs will only cover the literal meaning of the words. However, owners of EUTMs filed before 22 June 2012 have a 6 month window within which to potentially broaden the scope of protection.