AMENDED COMMUNITY TRADE MARK REGULATION Key Provisions
O/ref.: DR/OHMI 03.03.2016
Regulation (EU) No. 2015/2424 of the European Parliament and the Council, amending the Community trade mark Regulation (EC) No. 207/2009 (Amending Regulation) of December 16, 2015, was published in the Official Journal of the European Union.
The Amended Regulation will enter into force on 23 March 2016, however part of the changes will only be applied as from October 1, 2017.
I. Changes into force as from March 23, 2016.
OHIM will be called the European Union Intellectual Property Office (EUIPO) and the Community trade mark will be called the European Union trade mark (EU trade mark).
The main change lies in the adoption of a new one-fee-per-class system for application and renewal taxes.
The new taxes for application or renewal will be:
- 850 EUR for 1 class
- 900 EUR for 2 classes
- 150 EUR for any additional class in excess of the 2nd.
ADDITIONAL NEW ABSOLUTE REFUSAL GROUNDS
Trademarks will be refused if they consist exclusively of a characteristic (shape, sound, color, etc.) which results from the nature of the goods themselves, which is necessary to obtain a technical result or characteristic or which gives substantial value to the goods.
Also trademarks provided for Protected Designations of Origin, Protected Geographical Indications or other intellectual property titles will be refused.
REVIEW OF EXISTING LIST OF GOODS
Whereas OHIM previously applied a large interpretation of the description of goods and services by accepting that the complete class heading in the description could cover all goods or services falling in that class, the European Court of Justice in its IP Translatorruling decided that henceforth a literal interpretation should be adopted.
As from March 23, 2016, owners of CTM registrations filed before June 22, 2012 which designate complete class headings will have the opportunity to file a declaration for clarifying their goods of interest.
The deadline to file such declaration will be September 23, 2016. If no declaration is filed by that date, the scope of the registrations shall be defined exclusively by the existing wording of the list of goods and/or services.
We will screen all of your EU trade marks that fall under the requirements in order to determine if further action is necessary. If this provision applies to your trademarks, we will contact you shortly in this regard.
ADDITIONAL GROUND FOR OPPOSITION AND CANCELLATION
Oppositions and cancellations on the basis of Protected Designations of Origin and Protected Geographical Indications will be possible.
NEW OPPOSITION DEADLINES INTERNATIONAL REGISTRATIONS
The opposition period against international registrations designating the EU will start one month after the date of publication (instead of 6 months). The opposition period of 3 months remains unchanged.
II. Changes into force as from October 1, 2017.
GRAPHIC REPRESENTATION TRADE MARK NO LONGER NEEDED
The requirement of graphic representation is deleted from the definition of the EU trade mark. Representation of the sign should be permitted in any appropriate form, using generally available technology (audio, video, etc.), as long as it is clear, precise, selfcontained, easily accessible, intelligible, durable and objective.
A new category of trade marks will be introduced: the certification marks.
Whereas collective marks are owned by a collective entity and are used by its members to identify their goods and services and to indicate membership in the group, certification marks are owned by a certifying institution or organization to permit adherents to the certification system to use the mark as a sign for goods and services complying with the certification requirements.
The modifications listed above are just a summary of the main changes introduced by the Amended Regulation. Nevertheless, we will not fail to inform you in every separate case of the particularities of each of these modifications and to draw your attention to other relevant changes applicable to your EU trademarks.