Bart A.M. van den Bergh
(Edited by Greg Teeters)
What is happening in the EU and why it matters to you!
As commenly known, the Community trade mark (CTM) gave its proprietor a uniform right applicable in all Member States of the European Union*.
On March 23, 2016, the Office for Harmonization in the Internal Market (OHIM) officially changes its name to the European Union Intellectual Property Office (EUIPO), as set out in the amending EU Trade Mark Regulation (Regulation (EU) No. 2015/2424). In the same vein, the Community Trade Mark (CTM) now becomes the EU Trade Mark or EUTM. The Regulation has no impact on the Registered Community Design.
The European Union Intellectual Property Office (EUIPO) in Allicante is the European Union authority responsible for managing EUTM’s (formerly CTM’s). The basic idea of CTM originated in 1964 with the first steps to the “Convention on European Trademark Law”. OHIM filed the first registration of the Community Trademark in 1996, and since then a number changes have taken place. These changes have been primarily technical in nature, and in the area of taxes. In 2016, after 2 years of complex discussions, a major overhaul will take place which will effect users of the CTM system both inside and outside the EU.
The name CTM is replaced in 2016 by the EUTM, European Trademark. Also, OHIM is renamed to EUIPO, the European Intellectual Property office. Some of the changes are highlighted below.
For trademark owners it is important to know that the requirement for a trademark to be capable of graphic representation is eliminated, opening the door to the registration of more types of nontraditional trademarks, albeit extending existing grounds for refusal of shapes to “other characteristics”; by bringing forward the opposition period, International Registrations designating the European Union proceed to grant much more quickly. And from now on, trademark owners can seize counterfeit goods in customs situations in the European Union under defined circumstances.
Some of the goals that will take place, and the more substantive changes in this more flexible approach are: “…support innovation and economic growth by making the national trademark systems throughout Europe more accessible, more efficient and more effective for businesses…”. Another aim is to ensure and develop a better matching between the EU and national Trademark offices. As stated before, the goal is to have a better balance of national law in the Trademark Directive. This will improve the situation in areas such as the protection for goods in transit, the protection of trademarks with reputation, transfer and licencing of trademarks and collective marks.
The IP Translator case is implemented in respect of registrations filed before 22 June 2012.
Trademarks filed before 22 June 2012 and that cover entire class headings now only cover these specific goods and services and not the entire class, unless Article 28(8) Declarations were filed before 23 September 2016 deadline.
Filing of an application through National Offices will no longer be possible. There will be the new ability to file and represent in Iceland, Liechtenstein and Norway (the non EU EEA countries). Cancelation procedures can be filed in the new situation also at the EUIPO, so one will not need to go to a court for these cancelations. Also, the EUIPO will create a mediation center which is an interesting way to resolve disputes.
Also relevant to know is that the 3 class system per filing system will be abandoned and there will be a new ‘one-fee-per-class’ system. Each additional class after the first one will require an extra fee. The official application taxes for one class will be 5,5% lower compared to the current 3 classes official fee. The official renewal taxes will be 37% lower for one class compared to the current 3 classes official renewal fee. There will also be a decrease in opposition, cancellation and appeal official fees.
The regulations entered into force on March 23, 2016 as well as those that enter into force on October 1, 2017. Implementation took place very soon after that.
All in all, this even more solid single procedure in the EU simplifies your trademark strategy at the European level. EU filings will identify very solid the origin of your activities. And it shows the company’s commitment to its clients, and last but not least it can be used to strengthen marketing.
* The EU Countries are: Belgium, Bulgaria, Croatia, Cyprus, Denmark, Germany, Estonia, Finland, France, Greece, United Kingdom, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Spain, Czech Republic and Sweden.
© 2016 All rights reserved.
Bart A.M. van den Bergh
Bart van den Bergh has over 15 years experience in delivering IP services. His internationally operating German company is delivering unmatched expertise regarding trademarks, designs and domainnames in the area of searches, maintenance, filings, renewals, prosecution and IP consulting. Its propritary IP management software provides you with detailed control over your IP portfolio. With headquarters in Düsseldorf, Germany and a branch office in The Netherlands, Meiermarken provides help and easy access to clients throughout Europe (for their European Trademarks) and beyond in an efficient, cost-effective way.