European Trademark Reform — How will it affect you?

The new European Trademark Regulation will come into force on 23 March 2016 and introduces some important changes that affect not only new trademark applications but may have an impact on existing registered trademarks.

If you are a European trademark owner or thinking about registering a European trademark, here is what you need to know.

1. Specification of goods and services

Up to June 2012 there was a presumption that where a trademark owner specified the class heading of the relevant goods or services, that they intended that all the goods and services included in that class were protected by the registration.  As a result of a case decided by the European courts in June 2012 this is no longer the case.  All trademarks following that case were required to precisely specify the goods and services for which they sought protection.   However, this left trademarks registered prior to June 2012 in limbo and the new Regulation seeks to address this.

If your trademark specifies only the broad Nice headings unless a declaration is submitted before 23 September 2016 specifying the exact goods and services intended to be protected, your trademark will only have protection in accordance with the literal meaning of the words in the class heading e.g. if your trademark is registered in class 25 for footwear this may not include items such as heels, inner soles or studs for football boots.

Accordingly, if your trademark was registered prior to June 2012 you should review the description of goods and services to ensure that it clearly and precisely describes the products and services for which you want protection. The deadline for filing a declaration is 23 September 2016.

2.  Fees

Currently the fees for European trademarks automatically include up to three classes of goods and services.  From 23 March 2016 this will no longer be the case, fees will now be charged on a class by class basis.  The new fee regime will come into being on 23 March therefore if you are contemplating registering a European trademark in more than one class you should act quickly to avail of the current fee rate.

3. Name changes

OHIM, the Office for Harmonisation in the Internal Market, will be renamed The European Union Intellectual Property Office and community CTMs or community trademarks will now be known as European Union Trademarks, EUTM.

4. Non Conventional Marks

The requirement for a non conventional mark to be capable of graphic representation has been removed.  The requirement henceforth will be that the representation is clear and precise, intelligible and objective.  This should make it easier to register non conventional marks.

5. Own Name Defence

The Regulation will mean that companies will no longer be able to rely on the ‘own name’ defence against trademark infringement.  The defence will now be limited to natural persons only.

6. Greater protection against counterfeit

The new regulation introduces greater rights for trademark owners to use customs procedures to prevent third parties transiting counterfeit goods through the EU.

What should you do now?

• Review existing trademarks to ascertain whether a declaration regarding specification of goods and services needs to be made.
• If you are contemplating registering a trademark consider whether application prior or post 23 March will have more favourable fees.  This will depend on the number of classes you propose to register.

If you are unsure whether your trademark is affected by the changes, please feel free to contact us to discuss.

For further information on the above, please contact Elaine McGrath at emcgrath@reddycharlton.ie