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Are your trademarks ready for new times?

25. januar 2016

The biggest changes to trademark legislation in the EU since the introduction of the Community Trademark (CTM) in 1996 are about to take place. A new EU Trade Marks Directive will enter into force in January 2016, but more pressing is that the new Trade Mark Regulation will also enter into force on 23 March 2016.

There are a number of things trademark owners should be aware of. Consider these seven key elements of the new Trade Mark Council Regulation. Some of the elements should be addressed sooner rather than later, especially if you expect (and need) EU-wide protection:

  • The new Trade Mark Council Regulation enters into force on 23 March 2016.
  • New Guidelines have been issued and CTMs will change name and become European Union Trademarks (EUTM), and OHIM will change its name to European Union Intellectual Property Office (EUIPO).
  • If you have CTM registrations (which have been applied for prior to 22 June 2012) covering the "class heading" in any class of goods and/or services, you should consider amending your registrations now or at least prior to the expiration of the “sunrise period / grace period”. If you do not amend your registration, the new Council Regulation is very likely to weaken your protection coverage.
  • The requirement of graphical representation of a trademark registered in the EU is no longer present and hence, we believe that the EUIPO is expected to be more lenient when it comes to registrations of for instance a scent (it has not been addressed, how this registration is to take place exactly,  but the possibilities are there).
  • The rules regarding transit have been strengthened significantly from a right holder perspective. Now, it is more likely that infringing products passing through the EU can be stopped if the right holder has rights in the country of the destination.
  • With the new Regulation, application fees will no longer cover up to three classes. Instead, only one class is covered by the basic fee which will be lowered to EUR 850.00. Adding a second class will cost an additional EUR 50.00 and adding a 3rd class will cost an additional EUR 150.00 per class (in excess of three classes).
  • Renewal fees will be the same as an application fee.

Our advice to owners of CTMs is to review their existing registrations and assess whether the new Trade Mark Council Regulation may influence their protection coverage within the EU.

We are highly experienced in these matters and look forwarding to assisting you.

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