March 01, 2016

What to expect of the upcoming entry into force of EU trademark reform package

By: Gonzalo Barboza and Aída Tarí

There are some changes that are taking place in the Community Trademark system following the recent publication of the EU Trade Mark Directive 2015/2436 and EU Trade Mark Regulation 2015/2424 in the Official Journal of the European Union. The goal of the new legislation is to foster innovation and economic growth by modernizing and harmonizing the trademark system throughout the EU, in order to make it more effective and advantageous for its users. The majority of the changes will come into force on March 23, 2016. Below are some of the key changes implemented by the reform package.

1. Greater clarity in class headings following the IP Translator decision of the Court of Justice (C-307/10). Specifications will need to be clear and precise and broad terms should be avoided.

2. Changes to cancellation proceedings. All national offices need to implement administrative cancellation proceedings within 7 years of entry into force of the Directive.

3. “Community Trade Mark” will be renamed “European Union Trade Mark” and OHIM will be called “European Union Intellectual Property Office” (or EUIPO).

4. Removal of graphic limitations to protectable subject matter. The definition of what can constitute a trademark will be broadened to allow for marks that are not capable of being represented graphically i.e. sounds, colours, smells, etc.

5. The scope of what is likely to be refused on ‘absolute’ grounds will be broadened to include for example geographical indications, plant varieties, traditional terms for wines and traditional specialty foods.

6. International Registrations (IRs) designating the EU will be examined and granted earlier if they meet no oppositions (around 4 months).

7. Greater protection against counterfeit goods in transit. EU Trademark owners will be able to prevent the entry of infringing goods even if they are not intended for the EU market.

There are also significant modifications to the current practice in terms of official fees and this will affect both applications and renewals. Particularly in relation to renewals, official fees will be significantly lower than the current ones.

If you need any further information or clarification on the above information, please do not hesitate to contact us.