Big Changes Ahead: European Trademark Reform Package Adopted

By: Dr. Ulrike Gruebler

Significant changes to European trademark law will be coming into effect in 2016. Just before the turn of the year the European Parliament adopted a very substantial reform package for EU trademarks. The revised laws aim to make EU trade mark law fit for the challenges of business in the 21st Century, for example by making the registration of trademark marks cheaper, quicker and more reliable for firms.

The changes are the result of almost 3 years of inter-institutional debate and the confirmed reform package contains a wide range of innovations. In fact, the amendments will bring the most substantial change of European trademark law since the  introduction of the Community trademark system in 1996. The changes will include the following:

There will be a new one-fee-per-class-system for trademark applications and renewals and the fees will decrease.

The Office for the Harmonization in the Internal Market (OHIM) will be renamed into European Union Intellectual Property Office (EUIPO), an updated version of the Guidelines for Examination will enter into force and what was known as Community trade mark will be called European Union trademark (EUTM).

The regulation will also affect “broad” specifications of goods and services of Community trademarks which cover “class heading” terms, a topic that has undergone substantial discussions since the IP Translator case of the CJEU.

The opposition period for EU designations in International Registrations presently commences six months after publication. This has been amended to be one month after publication. The opposition period itself remains three months.

There are also changes concerning the seizure of counterfeit goods which are in transit through the EU. A seizure will become possible even in cases where the goods were not meant for the EU, unless they would not be infringing in the country of their final destination. The respective burden of proof will be shifted towards the alleged infringer.

Non-traditional trademarks will be registered more easily since the requirement to represent the mark “graphically” will no longer apply.

Following the approval of the European Parliament on 15 December 2015, the European Commission has meanwhile published the new Trade Marks Directive (Directive (EU) 2015/2436) and the new Community Trade Mark Regulation (Regulation (EU) 2015/2424) in the Official Journal of the European Union. The amended Regulation sets out rules applicable to EU trade marks and to OHIM and will come into force on 23 March 2016. The Directive intends to harmonize the national trade mark systems of the EU Member states. It will come into force on 13 January 2016 but will leave the Member States substantial time to implement the changes into national law.

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