As of 23 March 2016, the amended European Union Trade Mark Regulation No. 2015/2424 will enter into force.
The reform package introduces a number of changes which will impact CTM rights holders and create a more modern and streamlined system. Rights holders with CTMs filed before 22 June 2012 and those wishing to file new CTMs in 3 or more classes should pay particular attention. The headline changes to be aware of are as follows:
After 24 September 2016,class headings and other general terms will take their literal meaning to meet the new requirement for 'clarity and precision' based on the 'natural and usual meaning' of the terms. This codifies the CJEU's decision in IP Translator and will limit the scope of certain CTMs. Rights holders with CTMs filed before 22 June 2012 (the date of IP Translator) which include a complete class heading will have the opportunity to modify their specifications by filing a Declaration prior to 24 September declaring that the CTM's class heading was intended to cover all the goods and/or services in that class. N.B. There are third party defences available in certain circumstances to deal with any overlap caused by the specification amendments. CTM owners cannot prevent the use by third parties of any items added to the specification via the declaration (or oppose or invalidate those items) if the third party use commenced before the specification amendment and the use did not infringe the literal meaning of the class heading at the time the use began.
To discourage trade mark cluttering, the system will change from a single 'basic fee' that covers up to three classes to a 'one-fee-per-class' system. In practice, this means that rights holders will pay (i) a lower fee if they apply for only one class, (ii) the same fee if they apply for two classes, and (iii) a higher fee if they apply for three or more. There are also reductions in the renewal, opposition, cancellation and appeal fees.
Number of classes
Current Application Fee
New Application Fee
Current Renewal Fee
New Renewal Fee
|€900 covers up to three classes
|€1350 covers up to three classes
|Fourth and all subsequent classes
The restrictions against shape marks which result from the nature of the goods, are necessary to achieve a technical result, or give substantial value to the goods are now extended to apply to all types of trade marks. Filing non-traditional marks may become easier as the requirement for a graphical representation is abolished.
IRs will have a shorter path to registration because, while the opposition period remains at three months, it will start one month after the date of publication (instead of the current six months).
A new European Union Certification Mark will be introduced on 1 October 2017, allowing rights holders to protect certification marks on an EU-wide basis e.g. CE or the Kite Mark.
Lastly, one of the most visible changes will be that as of 23 March 2016, the Office for Harmonization in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO), and the Community Trade Mark (CTM) will be called the European Union Trade Mark (EUTM).
If you have any questions in relation to the reforms, please get in touch with your usual Rouse contact.