December 10, 2015

European Union trademark reform

The amended EU Community Trade Mark Regulations (CTMR) are expected to come into force in early 2016. A brief overview of key regulations changes is represented below.

  • Office for Harmonisation in the Internal Market will be renamed into the European Union Intellectual Property Office (EUIPO); the “Community trade mark” term will be replaced by the “European Union trade mark”.

  • Currently, a trademark can only be registered, if it can be represented graphically. In the amended regulations “graphic representation” requirement will be removed. A trademark will be registered, if it can be represented on the Register of European Union trademarks, in a manner which enables public to determine the clear and precise subject matter of the protection.

  • Rights conferred by a European Union trademark will be strengthened. According to the amended regulations the proprietor of a EU trade mark will also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods come from third countries and contain a trademark which is identical or similar to the EU trademark.

  • According to the amended regulation it will be impossible to file an application to the central industrial property office of a Member State or at the Benelux Office for Intellectual Property. All applications shall be filed only directly to the EUIPO.

  • Changes into regulation prescribe that an application fee will only cover one class, while currently it covers three classes. Fee amounts are to be changed accordingly. The updated fee schedule for registration of a EU trademark will be available at the IP-Coster Quotation System upon entering into force.

  • The way of designation and classification of goods and services will be changed remarkably. According to present practice for applying for goods and services in a specific class an applicant should only indicate the heading of the class according to the Nice Classification. Amended regulation represents a new practice. The goods and services for which the protection is required shall be identified by the applicant more clearly and precise. Applications consisting of unclear and imprecise general terms will be rejected.

  • As amended, the EU search report will be drawn up only after request of an applicant. Currently, the EU search report is drawn up in due course, without any request.

  • According to the amended regulations an applicant may be represented before the Office by any legal practitioner qualified in one of the Member States of the European Economic Area, but not only the EU, as it is prescribed currently.

Author: Lynda Miller