The EU Trade Mark Reform: the 10 key changes you should know about

Changes to Names

The Community Trade Mark (CTM) is no more. Instead the unitary EU-wide trade mark is now called the European Union Trade mark (EUTM). The name of the EUTM Registry has also changed from the Office of Harmonisation in the Internal Market (OHIM) to the more memorable European Intellectual Property Office (EUIPO).

Changes to Fees

The fee structure for both application and renewal fees has also been revamped. The old system with a basic fee that covered up to three classes of goods/services has been replaced by a pay-per-class system. The amounts for applications are the same as those for renewals, as follows:

• One class: €850
• Two classes: €900
• Each class above two: €150 per class

Need for Graphic Representation

This change doesn’t come into force until 1 October 2017, at which point the need for a mark to be graphically represented will be replaced with a requirement for “clarity and precision” in what is protected. This should, in theory, make is easier to protect non-traditional trade marks, such as sounds and smells. However, the grounds on which an application can be refused have been expanded and an EUTM application can now be refused where a mark consists of characteristics which result from the nature of the goods, which are necessary to obtain a technical result, or which add substantial value to the goods. These changes are likely to limit the effects of the removal of the graphic representation requirement.

Specifications

Irrespective of when the application was originally filed, all specifications are now interpreted in accordance with the literal meaning of the words used. This is a change from older practice, under which EUTM applications covering the entire “class heading” of the Nice Classification for any class of goods/services were deemed to cover all the goods/services in the full alphabetical list for that class. This change means that some trade mark owners will lose protection. To temper this, there is a six month sunrise period, ending on 24 September 2016, during which such parties can file a declaration stating that they had intended to cover the full alphabetical list when they originally filed their applications.

Certification Marks

As from 1 October 2017 it will be possible to file EU-wide certification marks. Full details of how this system will work are not yet available.

Counterfeits Travelling through the EU

The owners of EUTM rights can now seize counterfeit goods that are travelling through the EU, even if those goods are not intended for the EU market. It should, however, be noted that an alleged infringer will have a defence if they can show that there would be no trade mark infringement in the intended country of final destination.

Infringing Acts

The list of acts that constitute trade mark infringement has been expanded to specifically include the following:

• Use of a trading name or company name;
• Various preparatory acts, including applying a trade mark to packaging or labels;
• Use in comparative advertising.

Defences to Infringement

The key changes here are that the “own name” defence no longer exists for companies, and that the “descriptive indications” defence has been expanded. The latter means that defendants using non-distinctive terms that are included within a registered trade mark now have the possibility of raising a defence to infringement.

Intervening Rights

It is now more difficult to rely on old unused rights to attack later rights that were obtained between the filing of an allegedly infringed mark and the acts of infringement complained of.

Opposition Changes

The biggest changes to EUTM opposition proceedings are as follows:

• Protected designations of origin and geographical indications now have their own separate ground of opposition;
• The date of application of the opposed application is now the relevant date for the purposes of proof of use in EUTM opposition proceedings, not the date of publication;
• The opposition period for EU designations under the International Trade Mark system is no longer delayed by six months after after republication by the EUIPO, but instead starts one month after republication.