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EU Trade Mark Reforms Adopted by EU Parliament

On 15 December, the European Parliament approved a new package of proposed reforms to trade mark law in the EU, marking an important step towards entry into force of a new Trade Mark Regulation, and the implementation of a new Trade Mark Directive.  The reforms, which were discussed in detail in our briefing of 29 October, constitute some of the most important changes to EU trade mark law since the introduction of the Community Trade Mark system in 1996.

The new Regulation will to come into effect on 23 March 2016, and Member states will then have three years to implement most of the new Directive into their national laws.

The reforms are intended to modernise the current system, making the registration of trade marks in the EU cheaper, quicker, more efficient and more reliable.  Amongst the key changes are:

  • Removal of the graphical representation requirement.
  • Changes to the classification system and official fees.
  • Clarification regarding the use of class headings in specifications.
  • Greater protection against infringing goods in transit.
  • New terminology, with references to the “Community” being replaced by the more appropriate and accurate “European Union”.

In our previous briefing, we looked in detail at the implications of the removal of the graphical representation requirement.  We now turn to the potential impact for brand owners in light of the changes to the classification system and official fees, and the use of class headings.

Changes to Classification System and Official Fees

Under the current system, the basic CTM application fee includes up to three classes of goods/services, with an additional fee being charged for each additional class over three.  EUTM applicants will no longer be able to benefit from the three for one system when the reforms come into force.  Instead, the basic fee will cover only one class, and each class over the first will incur an additional fee.

For many, the reform will appear unwelcome, though it is worth bearing in mind that, for those applicants who only wish to cover one class of goods/services, official filing fees will be lower, and for those looking to cover two classes, there will be no increase.  The reforms will, however, mean a small increase in official filing fees for applicants looking to cover three or more classes of goods/services. 

By way of example, the table below sets out the differences in official filing costs for up to six classes.

No. of Classes Current Fee New Fee
1 €900 €850
2 €900 €900
3 €900 €1,050
4 €1,050 €1,200
5 €1,200 €1,350
6 €1,350 €1,500

It is hoped that the reform will help to reduce the cluttering of the register which has resulted from the “three for one” system, which has tempted applicants who might otherwise have sought registration in only one or two classes to include additional classes in their application.

Brand owners who habitually file in three or more classes in the EU would be wise to consider filing any new applications sooner rather than later, to have the benefit of the three for one system.

Use of Class Headings

Following the decision of the CJEU on the IP TRANSLATOR case, the reforms seek to clarify the approach to use of class headings in specifications.  Previous practice that use of the class heading covered all goods/services in the class has been replaced with the requirement that the goods/services for which protection is sought must be identified by the applicant “with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought”.  The effect of this is that class headings will be interpreted as including all goods/services which are covered by a literal interpretation of the terms therein.  Goods/services which fall within the class in question but are not covered by a literal interpretation of the class heading will not be included. 

Importantly, proprietors of CTMs filed before 22 June 2012 which cover entire Nice class headings will be given a period of six months from the entry into force of the new Regulation to state whether, by using the class heading(s), they intended to cover goods/services which extend beyond such a literal interpretation and, if so, to amend their specification to explicitly include such goods/services.  Proprietors will therefore have until 23 September 2016 to notify the Registry of any amendments.  Any registrations not so amended within the six months will be deemed to cover only those goods/services encompassed by a literal interpretation of the terms in the specification. 

Owners of existing CTMs should check whether any of their registrations might fall under the category of registrations to which the change in practice applies, and consider their position carefully.  The six month period not only provides CTM owners with the opportunity to ensure that they do not suffer any loss in protection as a result of the change in practice, but also effectively offers a one-off opportunity to update the list of goods/services where this would otherwise normally be precluded as a broadening of the specification.

03 February 2016

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