As of March 23, 2016, the “Community Trade Mark” (CTM) is going by a new name: the “European Union Trade Mark” (EUTM), reflecting the evolution of the European Community into the European Union. By force of Regulation No. 2015/2424, the Office for Harmonization in the Internal Market (OHIM), the body responsible for administering the European trademark regime, will now be called the European Union Intellectual Property Office (EUIPO). EU member states will have three years to implement the new EU trademark directive into their national laws.
The changes to the EU trademark regime are not merely cosmetic. Substantive changes include the following:
- Marks are no longer required to be “capable of being represented graphically.” Instead, marks must be capable of “being represented on the Register of European Union trade marks, . . . in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” For example, smells and sounds may now be protected.
- All goods and services to be offered under the mark must be clearly identified in the application. Checking a box for a particular Nice Classification heading will no longer claim all goods and services that might be thought to fall within that class. Because of this change, owners of existing registrations applied for before June 22, 2012, will have until September 24, 2016, to file a declaration stating the intended class of goods and services. Absent such a filing, the registration will only be valid for goods and services that are clearly covered by the literal meaning of the indications included in the heading of the relevant Nice Classification.
- The provisions for refusal of registration for marks that are otherwise subject to EU legislation, national law, or international agreements, such as protected geographical indications, designations of origin, and traditional specialities guaranteed, have been clarified.
- There is now a right to prohibit third parties from undertaking preparatory acts, including printing packaging, labels, tags, and security features containing an infringing mark.
- The rights conferred by an EUTM against third parties accrue at the date of the publication of the registration of the trade mark.
- Licenses may be recorded in the Register, but may also be cancelled at the request of the licensor.
- Applications are subject to a new fee schedule.
- In an inter partes proceeding, the losing party will bear the fees incurred by the other party, including “travel and subsistence and the remuneration of a representative.” However, the losing party’s fee payment is now limited to what the winning party actually paid in fees for its role in the proceeding.
- The provisions regarding the administrative makeup of the Office have been altered. The EUIPO will be managed by an Executive Director, as opposed to the OHIM, which was managed by a President.
Certain provisions permitting the registration of European Union Certification Marks will take effect on October 1, 2017.
The EUIPO issued revised trademark practice guidelines, available here, on the same day the new directive went into effect. For further information, contact your BakerHostetler trademark attorney or Trademark Group team leader Nancy Frandsen.