E-News No.45

E-News No.45

EU Trade Mark Reform  – New Regulation (EU) N° 2015/2424: Changes that will enter into force on March 23, 2016 by Eléonore Gaspar (Chair of the Standing Committee on Trademarks)

http://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1457092102847&uri=CELEX:32015R2424

The amending Regulation brings a number of changes in the areas of fees, examination proceedings, absolute grounds of refusal, relative grounds of refusal, designation of goods and services, opposition and cancellation proceedings and appeals, which will enter into force 90 days after publication, i.e., on March 23, 2016.

Apart from the changes in terminology, the main changes are the following :

  • It will no longer be possible to file EU trade mark applications through national offices.
  • Fees for registration or renewal will be per one class instead of covering three classes. As a result, there will be a separate fee for each class. After March 23, 2016, it will be cheaper to file a EUTM in just one class but more expensive to file a EUTM for 3 classes. Renewal fees will always be significantly lower.

Renewal fees will have to be paid by the renewal date and not at the end of the month, as was the case until now should a point as the others.

  • Fees for registration or renewal will be per one class instead of covering three classes. As a result, there will be a separate fee for each class. After March 23, 2016, it will be cheaper to file a EUTM in just one class but more expensive to file a EUTM for 3 classes. Renewal fees will always be significantly lower.
  • Renewal fees will have to be paid by the renewal date and not at the end of the month, as was the case until now.
  • It will no longer be possible to include disclaimers when filing a EUTM.
  • Class headings need to be clearly and precisely identified, and their wording will be interpreted according to their literal meaning. There will be a 6-month transitional period ending on September 24, 2016 during which proprietors of EU trade marks applied for before June 22, 2012, and registered in respect of the entire heading of a Nice class, may declare that their intention was to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading and therefore adapt their registration.
  • As per article 7 (1)(e) of the Regulation, absolute grounds of refusal related to the shape of a sign will extend to all other characteristics. As a result, article 7 (1)(e) of the Regulation will exclude from registration signs that consist exclusively of the shape or another characteristic that results from the nature of the goods themselves, which is necessary to obtain a technical result or gives substantial value to the goods.
  • Prohibitions based on Protected Designations of Origin (POD), Protected Geographical Indications (PGI), traditional terms for wine, traditional specialties guaranteed and other intellectual property titles have been clarified (article 7 (1) (j) (k) (l) (m) of the New Regulation) and it is possible to claim such rights in oppositions.
  • The Cancellation Division of EUIPO can rule on a request for assignment of a trademark registered in the name of an agent.
  • The opposition period against international trademarks designating EU will start one month after the date of publication of the international trademark registration (and no longer 6 months after).
  • It is necessary to inform the EUIPO of the date on which counterclaims were filed before EU trade mark courts before such claims can be examined and the Office must inform the EU trade mark court of any previous application for revocation or invalidity filed before the Office.
  • The relevant date for determining whether a trademark claimed against an EU trademark has been used is the date of the filing or priority date of the contested EU trademark (and no longer the date of its publication).
  • As regards the enforcement of EU trade marks, it will be possible for EU trade mark owners to prevent third parties from bringing into the EU counterfeit goods that are in transit unless the declarant or holder of the goods can prove there is no infringement in the country of final destination, and also to prohibit preparatory acts in relation to the use of packaging and other means.
  • Interlocutory revision in inter partes cases have been eliminated.

Other important provisions will come into force 21 months after publication of the amending Regulation, i.e., on October 1, 2017, and particularly the introduction of certification marks and the elimination of the requirement of graphical representation which means that the sign may be represented in any appropriate form using generally available technology and not necessarily by graphic means.

EX:32015R2424