EU trade mark reform

The Office for Harmonization in the Internal Market (OHIM) on 24 December 2015 published in the Official Journal, the Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation  changing the name of the Office in European Union Intellectual Property Office (EUIPO) and of the right conferred by “the European Union Trademark ” .

The said reform ,i.e the Amending Regulation, will enter into force on 23 March 2016 repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs). In fact one of the substantial changes will concern the fee structure that will be the same both for the first filing and the renewal. Thus the fee will be changed from 900 Euros up to three classes to 850 Euros for filing an application in one class, and  reduced from 1350 up to three classes to 850 for one class for the renewal, then 900 Euros for two classes and 1050 for three classes as from the third class the additional fee will be stable at Euros 150 both for the renewal and the first filing.

The reform of the fee structure does the pair with the willing of the Office to restrict the too broad specification of goods and services accepted so far. In fact from the famous IP Translation ruling Case C-307/10 onwards the right trend of the Office and the economic operators has been  for a clarity in determining the extent of the protection conferred by the mark .

In this connection it has to be underlined that the reform states that all trademarks applied for before June 22,2012 claiming protection for the headings of the Nice International Classification will see their scope of protection restricted, as the terms included in the headings will be intended for their literal meaning, unless until September 24,2016 the owners specify which goods and services not included in the literal meaning have to be covered.

Another change in line with the trends of the economic operators of the last 5 years aiming to increase the protection of the Geographical Indications, traditional terms for wine, traditional specialities and plant variety denominations, consists in allowing the bodies that guarantee these special rights to oppose latter trademarks.

What would be the joy of many trademark attorneys is the complete reformulation of art.4 of the Regulation defining which signs can be registered as trademark finally erasing the wording “any sign capable of being represented graphically” that was one of the main constraints for the registration of unconventional trademarks, i.e. sound marks and so on. However the modification of art.7 will make more difficult the registration of shapes as trademarks. Maybe in order to contrast with granting a too broad protection to shapes that we agree should be judged according to design criteria, giving space to the creativity of the designers and the taste of the customers always seeking for being astonished by innovation and originality (topics that all of us endorse!).

Last but not least the opposing party during the opposition procedure will have to give proof of the use of the mark during the period of five years preceding the date of filing or of priority of the EU trademark application while in the past said period started from the date of publication of the latter application.

Many other small amendments have been made but mostly concerning specification or clarification of the existing articles. Among them the limitation of the effects of a EU trademark with regard to the personal names that could always be used in the course of trade, providing that the said use is in accordance with honest practices in industrial or commercial matters.

The National Office of the member countries will have three years to implement these changes and we hope all countries could harmonize their legislation in order to give greater legal certainity and equity to the users of the EU system and a stronger protection against counterfeiting trademarks .