The new European Union Trade Marks Regulation
Effective as of March 23rd 2016, the new European Union Trade Marks Regulation (Regulation (EU) 2015/2424) (Amending EUTM Regulation), published on 24th December 2015, will replace the existing Community trade mark Regulation. The amending EUTM has sought to reform the existing European Trade Mark Application Procedure, and consequently a number of substantial changes have been made.
- Trade Mark Forms:
The former requirement that non-conventional marks be graphically represented is hereby deleted. An EU trade mark may consist of any kinds of signs provided they can be clearly distinguished from other signs and can be represented in a clear, precise, intelligible and objective manner. In addition, the definition of a trade mark has been expanded to include colours and sounds.
- Designation and classification of goods and services
Until June of 2012 it was thought that the use of the general indications listed in the class heading of a particular class gave protection to all goods or services in that class. However, the European Court of Justice in the IP Translator held that in order to ensure optimum protection to those who register their trade mark, it is necessary that there be sufficient clarity, precision and certainty. Article 28 of the amending EUTM Regulation has been fully revised and now regulates in detail the composition of the lists of goods and services. The new provisions will require trade mark owners to precisely specify the goods and services for which protection is sought. If your trademark was registered prior to June 2012, it is advisable that you review the description of the goods and services to ensure that accurately describes the goods and services for which protection is sought. A declaration may be submitted to reflect any amendments to the classification of goods or services. The deadline for such declarations is September 23rd 2016.
The EUTM Regulation has proposed amendments to the current fee structure for EUTM applications. Currently, the basic fee for a CTM covers up to three classes of goods and services. However, the new fee structure introduces a new “one -class -per -fee structure”. The aim of the new fee structure is to promote a more balanced trade mark system making it cheaper for businesses who wish to make a single-class application and reducing broad claims for goods and services not really required by the trade mark owner.
- Own Name Defence:
The amending EUTM Regulation has impacted on the Own Name Defence to the effect that companies will no longer be able to rely on this defence against trade mark infringement, rather the defence will be restricted to natural persons only
What should you do now?
If you have a registered trade mark and are uncertain whether the new European Trade Mark Regulation will affect you, or if you are intending to file an application to register a new trade mark and seek legal advice in respect of same, please do not hesitate to contact Mr. Donnacha Anhold, Solicitor and Registered Trade Mark Agent in order to discuss your options.