As some of you may know, the new Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community Trademark Regulation entered into force on 23 March 2016. This amended regulation implies major changes, which we will try to summarize in this article.
Changes in terminology
Firstly, the Office for Harmonization in the Internal Market (OHIM) is now known as the “European Union Intellectual Property Office” (EUIPO). Consequently, the Community Trademark (CTM) is now called “European Union Trademark” (EUTM).
Fees
The regulation introduces a new fee structure eliminating the flat fee covering three classes by default, wherein each class is charged separately. This means that the fees for filing a trademark application in three classes are increased in comparison with the old system, whereas the renewal fees are significantly lower. In addition, the Office has reduced the fees for other proceedings, such as opposition, appeal and cancellation proceedings.
Suppression of graphic representation
The requirement for the representation of a sign to be “graphic” is suppressed. From now on, a sign may be represented by technological means, in any way deemed appropriate, and not necessarily graphically, which implies the recognition of other forms of trademarks like sound marks.
Opposition to International Trademark Registrations designating the EU
The period to file an opposition to an International Registration changes from three months starting from the sixth month from its publication date, to three months starting from the first month from its publication.
Proof of use
The five-year period in which the trademark must be used will start from the date of filing or priority date of the European Union Trademark. In the previous regulation, the period ran from the date of publication of the Community Trademark Application.
Designation of goods and services
Under the new regulation, the applicant is required to identify goods and services clearly enough and accurately in order to determine the scope of protection sought. All trademarks filed claiming the whole heading of the Nice Classification, even if followed by the specification of any goods and/or services, see their scope of protection reduced and strictly limited to the literal meaning. When generic terms are used, it is understood that these include all goods and services clearly comprehended in the literal interpretation or wording of the description.
Regularization
As a result of the above, holders of trademarks applied for before 22 June 2012 which have been registered with respect to a whole class heading of the Nice Classification, may submit a statement indicating in a clear, accurate and specific way the goods and services that were initially to be covered, apart from the goods and services clearly understood in the wording. The deadline to submit the regularization expires 6 months after the entry into force of the Regulations, i.e., on 24 September 2016.
Should you wish to receive further information on this matter or have any doubt, please contact us at info@ballester-ip.com.
