Author: Maria Silvia Martinson, Lawyer at „RestMark Metida“, Estonia
2016 – the year of changes in the Community trade mark system, during which the trade mark registration procedure will be altered. The changes will affect both current and future Community trade marks or national trade marks owners. Therefore it is important to be informed of the upcoming in order to effectively protect your rights.
The CTM was created over 20 years ago, therefore modernization is necessary.
The main aim of the reform is to make the trade mark registration system more efficient and more accessible throughout the European Union. This, additionally, will foster innovation and economic growth. Procedural aspects will also be harmonised, ensuring coexistence and complementarity. More predictability, greatel legal certainty and lower costs were the key aspects considered during the discussions.
So what are some of the biggest changes? First of all, the reform provides significant changes in terminology. The Office for Harmonization in the Internal Market will be renamed to European Union Intellectual Property Office. Community trade mark (CTM) will also be renamed to European Union trade mark (EUTM).
The biggest changes concerning the CTM (or future EUTM) are the significantly lower fees. The current „three for the price of one“ system will be changed to a „one class per fee“ system.
The cost of filing an application in one Class will cost 850 EUR and in 3 Classes 1050 EUR, which is actually slightly more expensive than the 900 EUR paid now (when filed electronically). However, the price reduction is quite apparent when looking at renewal fees: currently the fee for 3 Classes is 1350 EUR, but in the future you will only have to pay 1050 EUR. In any case, the aim of the changes it to make it less expensive to own trade marks in only one or two Classes, which also unclogs the system from unused trade marks in certain classes. In view of the upcoming price changes, those who plan to register their mark in three or more classes should hurry to do it before the changes take effect.
Reform of the Class headings
The reform will also bring big changes to the scope of protection regarding class headings. More specifically, following the famous IP Translator decision in 2012, a very strict „clarity and precision“ approach has been adopted. If a class heading is used to depict the scope, it might not be precise enough. Therefore the literal meaning of the heading is considered the scope of protection, not the entire class. However, registrants of CTMs predating the IP Translator decision are given 6 months to amend their specification in case they only have the class heading listed in the registration.
A big change is related to the Sieckmann ruling in 2002. More precisely, marks will no longer need to be graphically representable as long as they are „precise, intelligible, clear, objective, self contained, durable and easily accessible“. This definitely allows for some unconventional trade marks to be registered.
In addition to the aforementioned, several other changes will see daylight in 2016. Member States have to implement administrative revocation and invalidity proceedings, certification marks will be introduced, the regulation revolving around geographical indications will be more precise and the fight against counterfeit goods is expected to become more effective. These and other Community trademark system changes should be published in the first half of next year, but will not come into force immediately. EU Member States will have 3 years to implement the rules of the new Trademark Directive into their national laws. Meanwhile, the new provisions of the Regulation will enter into force 90 days after the official publication of this Regulation in the Official Journal