The new “Community Trademark Regulation”, which was passed on 16/12/2015, enters into force! There are many “technical” changes, which will keep us trademark attorneys busy for years to come. For trademark owners, there are a few issues notable right now:
- From March 23, 2016 onwards, the Community Trademark will be called “European Union Trade Mark” and the registration authority “European Union Intellectual Property Office”. We assume that most people will refer to the trademark as “EU-trademark” and to the Office as “EUIPO” (what a nice tongue-twister…).
- If you intend to register an EU-trademark in a single Nice class, the fees have dropped from EUR 900, – to EUR 850, -, and renewal fees from EUR 1.350, – to EUR 850, – for a single class. For multiple Nice classes, EU-trademark registration will become more expensive (!)
- You might already own a Community Trademark? Has it been filed before June 22, 2012? In this case there is the possibility (and maybe even the necessity) to have the classification of goods and services of your trademark adjusted. With the new Regulation the goods and services shall be worded more concretely than had been usual in the past. This also applies retroactively for any trademarks filed before June 22, 2012, in case such trademarks merely claim “class headings of goods and services”. Therefore, owners of any such EU-trademark may file a declaration with EUIPO until 09/24/2016 at the latest, otherwise the scope of the trademark could be limited automatically. Do not hesitate to contact us if you need assistance! We are happy to help.
- It will be easier to register unconventional trademarks, such as sound marks or olfactory marks, since the condition that a trademark needs a “graphical representation” is deleted. However, this provision only comes into force only in October 2017.
- Finally, the fight against counterfeiters will be simplified: Even goods “in transit”, i.e. not (yet) within free circulation of goods in the EU, can be stopped.