Client Alert: Changes in the European Union
As of March 23, 2016, the EU Trade Mark Regulation (EUTMR) came into force and replaced the Community Trade Mark Regulation (CTMR). Some of the more significant changes of which trademark owners should be aware are:
- the Office for Harmonization in the Internal Market (OHIM) will now be called the European Union Intellectual Property Office (EUIPO) and the Community Trademark will be called the European Union Trademark (EUT)
- a new one-fee-per-class system for application and renewal fees has been implemented
- all official search reports (including the EUT search report) are now optional
- the new law clarifies that a trademark may also bar the use of a company name or trade name
- the use of a mark is sufficiently established to comply with the requirement of mandatory use within 5 years, even if the mark is used in a form deviating from the registered form as long as the distinctive character is not impaired, irrespective of whether the mark as used is also registered
- The European Court of Justice has ruled that lists of goods and services must be clearly and specifically formulated. This ruling has now been implemented by the new EUTMR. During a transitional period ending September 24, 2016, the owners of Community Trade Marks registered before June 22, 2012 using just the standard classification of the Nice classification system, as was accepted by OHIM, can declare their intention had been to acquire protection for goods and services beyond those just covered by the literal meaning of the classification used. The EUIPO will amend the list of goods and services to include those which an applicant actually intended to have covered. Should a declaration not be filed, the EUIPO will interpret the lists of such trademarks as covering only those goods and services clearly covered by the literal meaning of the relevant classification.
These changes may have the effect of changing fee schedules used by EU associates. If you have any questions, please contact a member of Shumaker's Intellectual Property Law practice group.
Jennifer R. Malin
Director of Marketing