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The European trademark reform is approaching

In April 2015 the Commission, the European Parliament and the Council reached a provisional political agreement on the trademark reform package. This will lead to major changes in the trademark law of the European Union and its member states when it is implemented. The package has to be put to a final vote by the European Parliament and could come into force in the beginning of 2016. The changes in the member states will need to be implemented nationally within respective deadlines. The final drafts of the regulation and a directive can be accessed here:

http://data.consilium.europa.eu/doc/document/ST-9547-2015-ADD-1/en/pdf
http://data.consilium.europa.eu/doc/document/ST-9547-2015-ADD-2/en/pdf

The regulation will bring some major changes to the European trademark system, starting with a rebrand of the “Community Trademark” into “European Union Trade Mark” and of the “Office for Harmonisation in the Internal Market” into “European Union Intellectual Property Office”. The directive will lead to a much stronger harmonisation of the national trademark laws and the legislation concerning the European Union trade mark. Some of the changes are the following:

1. Graphic Representation is deleted

Obtaining protection of alternative trademarks, like sound marks and trademarks consisting of smell (olfactory mark), is becoming more relevant. Therefore, the requirement of “graphic representation” is deleted from the criteria for registrability of a European Union Trade Mark. Presently a trademark can only be registered, if it can be represented graphically. Sound marks can be described with the help of notes and indication of special instruments. However, with olfactory mark this is more problematic. In the future a sign will be registrable as a European Union Trade Mark, if it can be represented in any appropriate form using generally available technology as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

2. Specification of goods and services

The applicant of a trademark will have to specify the goods and services of a trademark more clearly. Trademark protection will only include those goods and services that fall literally under the respective wording of the list of goods and services. The previous practise of the Office made it possible to cover all goods and services in a specific class by just naming the class headings. Owners of EU trademarks which cover class headings and which were applied for before 22 June 2012 will have a 6 months grace period to declare whether they intend to seek protection at the time of filing beyond the literal meaning of the class heading. The grace period will run from the date of entry into force of the new regulation.

3. Goods in Transit

The rights of EU trade mark holders will be strengthened. For example it will become easier to act against preparatory acts of trademark infringement. Moreover, the right holder will have better means to stop the transit of goods that bear essentially identical signs without their authorisation, even if these goods are not for circulation within the European Union. However, a possible defence against such actions is the proof that the respective trademark is not protected in the country of final destination of the goods.

4. Only one class covered in basic fee

The cost structure will be amended. The basic filing fee and the renewal fee of a European Union Trade Mark will only cover one class. The official fee for the application for one trademark in one class shall be EUR 850, if filed electronically. The fee for the second class will be EUR 50 and each additional class fee will be EUR 150. Presently, the basic filing fee is EUR 900 and covers up to three classes whereas the fee for each additional class is EUR 150.

The renewal fees will be identical to the filing fees in the future. Presently, the renewal fee is EUR 1350 if a request for renewal is filed electronically for the first three classes, whereas the fee for each additional class is EUR 400. The new trademark package will lead to a significant reduction of costs in renewal fees for European Union Trade Marks.

Zacco will be monitoring the further process of the European Trademark Reform and revert with more information. Contact your local Zacco consultant for more information.