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The New European Trademark

  • 13 January 2016
  • Articles

he European Parliament has approved the reform package that will soon imply significant changes, not only as regards important aspects of Community trademark regulations, but also in the medium term, for trademark practice at national level, due to the reform of the Directive. The new changes affecting Community trademark come into force on 23 March 2016.

We can highlight some of the many changes:

1. In the future the OHIM will be known as the “European Union Intellectual Property Office” and the “Community Trademark” will cease to be called by that name to become “The European Union Trademark”.

2. The requirement for the representation of a sign to be “graphic” is suppressed (given that this is also included in the new Directive. In the future this requirement will also disappear in national legislations). This implies the recognition of other forms of trademarks and adaptation to the legislation.

3. A broad regulation is founded for “certification and guarantee marks” and “collective marks”, establishing provisions for their registration and protection. They are, in this sense, almost identical to those proposed in the Spanish Trademark Law.

4. What is very important, because it will have immediate effects derived from the famous 2012 IP Translator decision, is the need to adapt the broad wording of the categories of all the trademarks prior to the same, to more specific and precise ones within a maximum period of 6 months. If not, the trademarks will only protect the literal wording of their categories which, in some cases, might imply the lack of protection of all or part of the products and services in which the client has an interest. For example, in the broad wording of category 35 (retail sales services), it would be necessary to indicate precisely what types of products are being sold, given that, to the contrary, these specific services will not be protected and, if the trademark was registered more than five years ago, it will be considered to have expired.

5. The period for opposition to international registrations fixed by the EU is changed from three months, starting from the sixth month from their publication, to become three months starting from the first month of their publication.

6. The Directive will bring national trademarks closer to the Community trademark system, given that it will require that all national and Community trademark procedures include a period of negotiation. It also foresees that invalidation or revocation procedures be necessarily decided by the administrative office itself. This will imply a saving of time and costs for the prior trademark owners who wish to contest an already registered trademark.

7. Generally speaking, the costs involved in actions taken before the European Union Intellectual Property Office will be at more affordable rates. This will include establishing a payment according to category, thus eliminating the flat fee for the first three categories. So, for example, the application fee for a Community trademark in one category will be 850 Euros, as against the current 900 Euros, and that for the renewal of one sole category will cost 850 Euros, much less than the current 1350 Euros for up to three categories.

8. Modifications affecting geographical indications for the absolute prohibition on registration have been included.

As far as harmonization is concerned, the Directive allows a period of three years for the national legislation of each country to adapt to the same.

Click the following link to read the Regulation 2015/2424, which was published in the Official Journal of the European Union of December 24, 2015


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The New European Trademark