The new EU-trademark regulation will enter into force in only six weeks. Are you prepared?
2016 will see the biggest changes to trade mark laws in the EU since the introduction of the Community trade mark (CTM) in 1996.
There is a lot of new very important information connected to the new Trademark Regulation and Directive in EU. Otmore will inform you in the most “non-legal” way of all the changes and try to give you a proactive advantage. The consequences can be serious if you do not act according to the new requirements and guidelines. Some part is not easy to understand so please do not hesitate to contact us if you need any guidance. In the end of this article you can find some more hard facts and also download the whole publication.
March 23 2016 – the new Community Trademark Regulation (publication (EU) No 2015/2424) will enter into force. Regarding the new Directive – see information in the end of this article.
One of the most important changes according to us is:
Retrospective changes in classification
Before 22nd June 2012 you were able to apply with so called class headings. After the IP translator decision (read more about the IP translator decision) this was no longer possible. That meant you had to specify in more detail the types of goods and services you requested protection for.
The new regulation gives all proprietors of trademarks (registered before 22nd June 2012) a possibility to re-classify their trademarks within a six month period. The transition period begins on March 23 and expires September 24, 2016.
The consequence you face as a trademark owner, IF you don’t do the necessary class changes can be very serious. In practice this means that the class headings will be interpreted literally, also known as the “means-what-it-says” or “what you see is what you get” approach.
Fees are changing
The basic charge for filing an application will only cover one class.The official fee will be 850 EUR for one class, second class costs an additional 50 EUR and from three classes and up 150 EUR/class. Renewal fees will also change.
OHIM will change their name to ”European Intellectual Property Office” (EU IPO), and the current ”Community Trademark” (CTM) will be replaced by the ”European Union Trademark” (EUTM).
EUTM will no longer require a ”graphic representation”
The criteria for registrability will no longer include a requirement for ‘graphic representation’. This will enable IP owners to register signs that cannot be seen. This, however, will enter into force upon implementation of the Regulation 1 October 2017.
No more disclaimers
The possibility for users to add disclaimers in trademark applications in order to overcome future absolute grounds objections is eliminated.
Transit of infringing goods
It will be easier for brand owners to prevent third parties from bringing counterfeit/infringing goods from non-EU countries into the customs territory of the EU. We will release a separate article about this subject in the beginning of next week.
Use requirement moves to the filing date, not the date of registration.
A number of changes will come into force 21 months after publication of the amending regulation (ie September 23 2017). More information about what’s happening will be found here: https://oami.europa.eu/ohimportal/en/eu-trade-mark-regulation. Of course you are more than welcome to contact Otmore and our specialists in this matter.
The subsequent publication of Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trademark regulation in the Official Journal of the European Union means that the amending regulation will enter into force on March 23 2016
The new Directive (2015/2436) will enter into force 20 days after its publication in the Official Journal (on January 15), but Member States have three years to then transpose them into their national law (seven years as regards to the provision of an administrative procedure for the cancellation of national marks).
Need assistance in Trademark related issues? Contact Otmore´s specialists.
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Network of high end and experienced consultants globally. With expertise in IPR- and business law, project management, technical platforms, e-commerce, technical architecture, PR and communication.
Otmore is also a certified representative for EU-trademarks under OHIM, oami.europa.eu.
We are INTA members – The International Trademark Association (INTA) is a global association of trademark owners and professionals dedicated to supporting trademarks and related intellectual property. www.inta.org