On December 15, 2015, the European parlement has agreed to an amended trademark regulation and a 'new' trademark directive that entail important reform of the European trademark law. The key changes are: the 'Community trademark' becomes a 'Union trademark', the description of the classifications must become more precise and the trademark no longer has to be graphic.
The new trademark directive and the amended trademark regulation will enter into force in January and late March 2016, respectively. The member states subsequently have three years to implement the 'new' trademark directive into their national trademark law. Below is a summary of important changes for your daily practice:
‘Community trademark’ becomes ‘Union trademark’
The 'Community trademark' is replaced by the 'trademark of the European Union (Union trademark)' and the name of the European trademark office will change from ‘Office for Harmonization in the Internal Market (OHIM)’ into ‘European Union Intellectual Property Office (EU IPO)’.
More precise description of the classifications
For trademarks that have been filed on or after June 22, 2012, the classification of a trademark has to be clearly and precisely described, in accordance with the so-called 'means-what-it-says' approach (the IP-Translator decision). The description will be interpreted literally to clarify the scope of trademark protection that is sought for goods or services. Trademark holders with a trademark that was filed before June 22, 2012, will be allowed the opportunity to amend the 'class heading' in accordance with the new regulations within six months from the entry into force of the amended trademark regulation. This period therefore expires on September 23, 2016. If you have trademark registrations from before June 22, 2012, then please contact one of our trademark attorneys as soon as possible to review the description of the goods or services.
No longer a requirement for 'graphic representation'
In addition, the requirement of 'graphic representation' is no longer applicable to both the amended trademark regulation and the 'new' trademark directive. This allows for non-visible signs (such as a trademark for a smell or a sound) to be filed from March 2016. Naturally, the sign has to be described clearly and precisly and has to meet the all other requirements.
Individual fees for each class
Currently, trademark holders pay one fee for a maximum of three classes. From March 2016 trademark holders of a Union trademark will pay for each class individually. Depending on the level of the fees (still to be determined), this can result in a reduction of the costs for Union trademarks with less than three classes.
Invalidation and revocation
It is currently only possible to invalidate or revoke a trademark via a court procedure. In the future it will however be possible to invalidate or revoke a trademark via an adminstrative procedure at the national trademark offices. This means that the related costs will probably be significantly lower than you might be used to.
If you have any questiosn relating to the above, please do not hesitate to contact one of our trademark attorneys.