Major Changes in European Trademark Practice Coming March 23, 2016

Major reforms of the European trademark system will take effect on March 23, 2016, with the enactment of Regulation (EU) 2015/2424 of the European Parliament and of the Council. Key changes you need to be aware of include:

• The Office of Harmonization in the Internal Market (OHIM) will become known as European Union Intellectual Property Office (EUIPO).
• The Community Trademark (CTM) will become known as the European Union Trademark (EUTM).
• Filing fees will change:
  • Instead of getting automatic coverage for three classes for a single filing fee (currently €900), the EUIPO will henceforth charge a separate fee for each class: €850 for the first class, €50 for the second class, and €150 for the third and subsequent classes. This change equates to a reduction in fees from €900 to €850 for applications in one class, the same fee for applications in two classes, and a slight increase from €900 to €1,050 for applications in three classes.
  • The renewal fee (currently €1,350) will likewise no longer cover up to three classes. The new renewal fees will be €850 for the first class, €50 for the second class, and €150 for the third and subsequent classes, which results in a reduction in renewal fees for registrations in up to three classes.
• Renewals will be due on the actual expiration date of the registration, not at the end of the month in which the registration expires.
• The three-month opposition period against international registrations designating the EU will open one month, rather than six months, after publication.
• Oppositions can be based on protected designations of origin and protected geographical indications.
• Starting in September 2017, the EUIPO will no longer require submission of a graphical representation for nontraditional trademarks (e.g., sound marks), and certification marks will be registrable.
• Descriptions of goods and services will be interpreted strictly as written such that class heading language will no longer be construed as covering all goods or services in the class. While broad class heading language may still be permitted, applicants should make sure that the language in an application clearly covers the goods or services of interest.
• To address this major change in coverage, owners of CTM registrations filed before June 22, 2012, will have until September 23, 2016, to file an amendment with the EUIPO revising their registrations to cover the specific goods or services of interest, in addition to the existing class heading language. International registrations designating the EU are excluded from this provision.

Perhaps the most important of the foregoing reforms is the provision involving the scope of class heading language. In a 2012 case involving the mark IP TRANSLATOR, the European Court of Justice decided that use of a complete class heading description does not guarantee that all goods or services in that class are covered.

What Should You Do Now?

• If you typically file in three or more classes, you should consider filing any planned applications before March 23, 2016, to take advantage of lower filing fees.
• Where feasible, consider delaying renewal of registrations until after March 23, 2016, to take advantage of lower renewal fees.
• Review existing CTM registrations filed before June 22, 2012, to determine whether the scope of the defined goods and services.
• Review CTM applications filed on or after June 22, 2012, to determine whether additional applications may be needed to ensure that goods or services of interest are covered.