New EU trademark law
On 23 March 2016, the Regulation of the European Parliament and of the Council (EU) No. 2015/2424 amending the regulation on the community trademark and the executive regulation became effective. It introduces a number of significant changes in the system of trademark protection in the territory of the European Union.
The Regulation is an element of a major reform which includes Directive No. 2015/2436 aimed making legislations of the Member States concerning trademarks more harmonious. The Directive became effective on 12th January 2016, and the EU Member States have time for implementation thereof until 2019.
Below, we present some of the changes in the EU trademark system:
“The Office for Harmonization in the Internal Market” (OHIM) has changed its name into “The European Union Intellectual Property Office” (EUIPO) which better describes the scope of tasks of the Office, and the Community trademarks have been renamed into the EU trademarks.
Currently, trademarks can only be registered directly with the European Union Intellectual Property Office. The possibility of filing applications through national bodies competent for the protection of industrial property has been eliminated.
The EU trademark application in electronic form for one class of goods currently costs EUR 850, the fee for the second class is EUR 50 and EUR 150 for each subsequent class. So far, at the price of EUR 900 it has been possible to register a trademark electronically for three classes.
For a trademark application in paper form the fee of EUR 1000 is to be paid for one class of goods and services which is increased by EUR 50 for the second class and EUR 150 for the third class.
The same fees will be due when protection of an EU trademark is extended for a subsequent period of ten years.
Classification of goods and services
Until 24th September 2016, owners of the trademarks registered earlier can file a declaration specifying the scope of protection of their marks according to the Nice Classification. Pursuant to the new regulation, the party filing a trademark application must sufficiently and precisely specify goods or services that will bear that mark. Therefore, if classes of goods and services are not defined by entrepreneurs using general terms and headings from the Nice Classification, it can lead to limitation of the scope of trademark protection.
Limitation of exclusions
The new regulation better protects the company name of a trademark owner since it provides that such owner may not forbid a third party to use in trading: the surname or address of a third party when such third party is a natural person. This limitation does not apply to company names and business designations of entrepreneurs.
Protection of sound and aromatic marks
As of 1st October 2017, the requirement for a graphic presentation of a mark will be waived. Designations of any type will be recognized as trademarks which make it possible to distinguish goods or services of one company from goods or services of other companies and to present those in the EU trademark register in the manner allowing relevant bodies and consumers to determine explicitly and precisely the object of protection granted to an owner of this trademark. This means that, for example, also sound and aromatic marks could be protected.