Reed Smith Client Alerts

On 23 March 2016, the European Union Trade Mark Regulation (dated 16 December 2015) comes into force. As part of the package of changes introduced by the Regulation, the ‘Community trademark’ will change its name to the ‘European Union trademark’.

The Regulation and the associated European Union Directive relating to trademarks, which entered into force on 14 January 2016, are together known as the ‘Trade Mark Package’ (the package).

The package concerns the reform and harmonisation of the different national trademarks legislation within the European Union. The deadline for implementing the Directive into national legislation is three years (that is, 14 January 2019) for certain provisions and seven years (that is, 14 January 2023) for other provisions.

Key points of the package

1. Terminology changes:

  • Community trademark becomes European Union trademark
  • OHIM becomes EUIPO (European Union Intellectual Property Office)

2. A refusal to register trademarks containing designations of origin and geographical indications and other assimilated rights (traditional terms for wines). These prior rights will also entitle their owner to file a notice of opposition.

3. A reinforcement of the fight against counterfeit products. The package introduces the possibility to prohibit the entrance of products coming from – and going to – third-party countries that are transiting through the territory of a member state of the European Union, if the trademark holder indeed detains a trademark protected in the country of final destination of the goods (abandonment of ‘Nokia/Philips’ case law).

4. The possibility to request the cancellation for non-use or the nullity of a trademark through an administrative procedure directly before a national intellectual property office, rather than having to rely on the courts. Implementation deadline for this administrative procedure: seven years.

5. Opposition procedure is compulsory for all member states.

6. The start of the opposition period for international registrations designating the European Union is reduced from six months to one month after the date of publication.

7. Clarification of class headings: class headings will be subject to a literal interpretation rather than a broad interpretation that covers all the products or services included in that class (in line with ‘IP Translator’ case law).

The holders of community trademarks filed before 22 June 2012 will hence have to declare by 24 September 2016 whether, at the time of filing, they intended to protect products or services other than those specifically designated in the general class heading.

Consequently, the wording of the relevant trademarks must be closely reviewed to determine whether it is necessary to file such a declaration before the office or not. Reed Smith can help you in this procedure.

8. Change of date of renewal: the date of renewal will no longer be the end of the month of the anniversary date, but on the anniversary date itself. So a trademark filed on 2 January 2007 will need to be renewed before 2 January 2017, not 31 January 2017.

9. The amendment of the current tax system that imposes one tax per class instead of a single tax for the first three classes . In addition, renewal tax will be reduced and based on the filing tax.


Client Alert 2016-020