Reform of the European Trademark System

In Insights, Uncategorized

18 January, 2016

After some years work on aligning and improving the European trademark system a new legislative package on trademarks has finally been accepted by the EU Parliament at the end of 2015. The new Trademark Directive is already in force, but needs to be implemented as national legislation within the next three years. The further course of the Directive into new national trademark laws thus follows national routes from now.

The new regulation on the European Trademark (EUTMR) will enter into force on 23 March 2016. The basic legislation is available, but the implementing regulation and official guidelines on practical issues are not yet final. Thus, we expect more information and many details over the coming months.

The most visible change with the reform is the change of name. What has been a Community Trade Mark (CTM) will become an EU Trademark. And OHIM (Office for Harmonization of the Internal Market) will change name to EU Intellectual Property Office (EUIPO).

But there are more changes on the way. Another very visible change is of the fee structure. So far, a basic application fee covers up to three classes. As of 23 March 2016 it will cover only one class. Thus, companies planning to file trademarks this year should already now consider their strategy and if it will be more advantageous to file now or await the new fee structure. If your sole interest is selling goods that belong to one class, like vacuum cleaners, then it would be cheaper to file the application after the 23 March 2016. But if you produce goods that belong to more than one class, like shoes and leather bags, it will be cheaper for you if you file now before the changes takes effect.

The change of fee structure also applies to renewals of trademarks, but for renewals the lowering of the fee is so significant that you will gain no matter what compared to today’s fees. Trademarks may be renewed 6 months in advance of their expiry date. The practical implementation of this is currently being considered by EUIPO. It has relevance in situations where e.g. a trademark expires after the 23 March 2016, but is renewed before, which fee is applicable? Awapatent will of course follow this closely and keep you informed.

Another big practical change will be the possibility of amending the list of goods and services for once’s trademark registration, if it was filed before 22 June 2012 and if it covers the class heading of a Nice class. Awapatent will inform you in a separate blog and via emails on this topic.

Awapatent will closely follow the implementation of the new regulation and will keep the Awa IP blog (www.awaipblog.com) updated on the most important or interesting changes. If you have any questions to how the reform might affect your trademarks, do contact your Awa IP Lawyer.

Anette Rasmussen, Attorney at Law and Line Wittendorff, Trademark Attorney, Awapatent

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