Relevant changes on the European Trademark Law
The European Union Trademark Reform Legislative Package has been published in the Official Journal of the European Union, wherein the Regulation amending the existing Council Regulation on the Community Trademark has been published on December 24, 2015, while the new European Trademark Directive has been published on December 23, 2015. That means that the amended Regulation enters into force on March 23, 2016, while the Directive enters into force on January 12, 2016. The European member states will then have the opportunity to amend their national trademark laws within three years (in some parts seven years) after January 12, 2016, whereas the Regulation will enter into force in certain parts immediately on March 23, 2016. Some other parts of the Directive which need implementing and delegated acts will only enter into force on October 01, 2017.
The Trademark Reform Legislative Package is the first large amendment since its introduction in 1993 and harmonizes the national laws of the member states of the European Union substantially. At the same time the trademark law will be adapted to the Contract of Lisbon.
We have summarized some of the most important changes for you:
- The application fees now cover one class only and have been reduced to EUR 850.00, while the second class creates costs of EUR 50.00 and the third and each additional class of EUR 150.00.
- The renewal fees have been lowered to EUR 850.00 for the first class, EUR 50.00 for the second and EUR 150.00 as of the third class.
- Opposition procedures and cancellation procedures because of non-use will now be handled by the Trademark Offices in all European member states, i. e. also in Germany, cancellation actions have to be filed with the German Trademark Office, once the Directive has been put into national law.
- The formulation of the list of goods and services has been precised and harmonized. Please note that in its new Regulation, the legislator offers EU trademark owners the possibility to define more precisely their lists of goods and services which were unclear or not precise enough up to this point. This may only take place during a transition period of 6 months, i. e. until September 23, 2016. This especially applies to lists of goods and services which only consist of the class headings of the Nice Classification, since, according to the latest case law and the new Regulation, these have been regarded as partially unclear or not precise enough.
- The European Trademark (EM) will now be called "European Union Trademark" (EUTM).
- The "Office" (OHIM) has been renamed and will no longer be called "Office for the Harmonization in the Internal Market (trademarks and designs)", but "European Union Intellectual Property Office" (EUIPO).
- The registration of a European Union Trademark will be accelerated, it is possible to waive any search reports.
- It is no longer necessary for European Union Trademarks to be graphically representable in order to be registered, that means that new trademark forms can now be registered, such as holograms, movies or odor marks.
- The protection of geographical indications, designations of origin, traditional terms for wine or traditional specialties guaranteed has been enlarged.
- Well-known trademarks have now a larger scope of protection.