European Trade Mark Reform – Changes from 23 March 2016

February 2016

On 23 March 2016 new EU trade mark laws will come into force.  Regulation (EU) No 2015/2424 (the Amending Regulation) was published on 24 December 2015 and is part of the EU trade mark reform legislative package that also includes the replacement of the existing EU Trade Mark Directive (Directive 2008/95/EC of the European Parliament and the Council).  

The Amending Regulation will bring about a number of changes that trade mark applicants and proprietors should be aware of. 

Fees Changes

The main headline change is in the fee structure.

New Official Fees will come in effect on and after 23 March 2016. From 23 March 2016, there will be a move to a “one-class-per-fee system”. This means that in practice applicants will pay a lower fee if they only apply for one class.

Renewal fees are also substantially reduced in all instances and set to the same level as application fees. There are also some minor reductions in opposition, cancellation and appeal fees. 

Name Changes

Existing Community trade marks and Community trade mark applications will automatically become European Union trade marks and European Union trade mark applications from 23 March 2016. Users will not have to take any action.  From that day, OHIM will be called the European Union Intellectual Property Office (EUIPO).

Procedural Changes from 23 March 2016

Main changes in the area of examination proceedings:

  • EU trade mark applications can no longer be filed through national offices.
  • Users will be able to choose whether they want to receive EU search reports and surveillance letters.
  • Increased clarity on the impact of the revocation of an earlier mark on which a seniority claim is based, which will now depend on the date of effect of the revocation.
  • Time period for submitting third-party observations - this should take place before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken.
  • The Office will have a right to re-open the examination of absolute grounds on its own initiative at any time before registration.

Main changes in the area of absolute grounds of refusal:

  • Functional signs (e.g. colour or sound) will now be subject to the same prohibitions applied to shape marks.
  • Clarification of the prohibitions related to Protected Designations of Origin (PDO), Protected Geographical Indications (PGI) and other intellectual property titles.
  • Elimination of the possibility for users to add disclaimers in trade mark applications in order to overcome future absolute grounds objections.
  • Codification of the current practice as regards invalidity proceedings based on absolute grounds, limiting its examination to the arguments and the grounds provided by the parties.

Main changes in the area of classification of goods and services:

  • Pursuant to the Court of Justice’s decision in IP Translator, the Regulation sets out a six-month transitory period for owners of European trade marks filed before 22 June 2012, to submit a declaration stating that the Nice Class headings set out in their specification were intended to cover all or some of the goods/services in that class’ alphabetical list.
  • Where no declaration is filed, the trade mark will be deemed to cover only the goods or services covered by the literal meaning of the Class heading i.e. what you see is what you get.

We will write to you separately about these changes and what may need to be done before September 2016.

Main changes to opposition and cancellation proceedings:

  • Changes to the start date for the opposition period against international registrations designating the EU. This period will now start one month after the date of publication.
  • Changes as regards counterclaims before EU trade mark courts. In this respect, EU trade mark courts will not proceed with the examination of counterclaims until either the interested party or the court have informed the Office of the date on which the counterclaim was filed.
  • The Office has an obligation to inform the EU trade mark court in question of any previous application for revocation or for a declaration of invalidity filed before the Office.

Main changes to relative grounds of refusal:

  • Introduction of a separate specific ground of opposition and cancellation on the basis of Protected Designations of Origin (PDO) and Protected Geographical Indications (PGI).
  • Changes in one of the dates for determining the obligation to submit proof of use and determining the relevant period. The relevant date will now be the date of filing or priority date of the contested EU trade mark application rather than the date of its publication.
  • A series of clarifications in line with existing practice and case law.

Main changes regarding appeal proceedings:

  • Elimination of interlocutory revision in inter partes cases, which should result in a shorter overall duration of appeal proceedings in these cases. This is in line with the aim of streamlining proceedings before the Office and taking into account that interlocutory revision of first-instance decisions in inter partes cases was possible only in very exceptional instances (since it required the agreement of both parties).
  • Insertion of certain provisions to clarify and codify existing practice regarding ancillary appeals and the date of effect of Board of Appeal decisions. These decisions take effect once the period to bring an action against them has expired or, if an action has been brought within that period, once it has been dismissed by the General Court or, in the case of further appeal, by the Court of Justice.

Further Changes in 21 months’ time

The Amending Regulation contains a number of provisions that will come into force only 21 months after its publication, as they have to be developed by secondary legislation.   These include:

  • Elimination of the requirement of graphical representation
  • Creation of a new European Union certification trade mark
  • Other procedural changes

OHIM’s online tools and examination guidelines will all be adapted in due course to reflect the changes brought about by the Amendment Regulation.

If you have any further questions about the new legislation, please contact your usual trade mark representative.