The new European trademark regulation – these are the major changes

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On the 23rd of March this year the amended European trademark regulation will enter into force. Since it is a regulation it will have immediate effect. These are the most important changes of the new regulation:

First, there will be some changes in terms of terminology. Terms in the regulation will be replaced with more up to date terminology. For example, “Community trade mark” will be replaced with “European Union trade mark” or “EUTM” and “Office for Harmonization in the Internal Market” or “OHIM” will instead be called the “European Union Intellectual Property Office” or “EUIPO”.

Second, it will no longer be a requirement to graphically represent the trademark applied for. Instead, the scope will be limited by the technical abilities of the EUIPO. In addition, sounds and colors, for example, will be explicitly included in the list of what an EUTM may consist of. However, these amendments will not apply in their entirety until 1 October 2017, due to the need of secondary legislation.

Third, the amended regulation will offer a new fee structure. On the one hand the fee for renewal of a trademark will be lower. On the other hand it will be more expensive to file an application for a multi-class trademark, since the current default 3-class per application system will be replaced with a 1-fee per class system.

Fourth, it will be possible to prevent third parties from transiting counterfeit goods that infringe existing EUTMs through the EU if such goods would also infringe in the country of the final destination. This is a difference that will give EUTMs an advantage over national trademarks until the directive has fully been implemented into national law.

Lastly, the classification of the goods and services for which a mark is registered will undergo changes. The regulation will be in accordance with the IP Translator ruling and consequently when applying for and classifying a trademark sufficient “clarity and precision” is necessary. Proprietors of EU trade marks applied for before the 22 June 2012, which are registered in the entire heading of a Nice class, may declare that their intention when filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class. This declaration shall be filed at the EUIPO by 24 September 2016 at the latest.

For further information, please contact David Leffler.

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