EU: Amendments to European Union Trademark Regulation entering into force on March 23

Changes to European Union’s trademark system set forth by Regulation no. 2015/2424 of the European Parliament and the Council are entering into force on March 23, 2016.

Modifications include new names for Office for Harmonization in the Internal Market (OHIM), from now on the “European Union Intellectual Property Office” (EUIPO), and for the “Community Trademark” (CTM), henceforward the “European Union Trademark” (EUTM).

Besides these new names, other changes include, among others:

• More easily allowing the registration for non-traditional trademarks, as sound, smell, taste, kinetic or hologram, as the requirement for graphic representation is replaced by any representation able to determine in a way clear and precise the subject matter of the protection;
• In accordance with this opening to non-traditional trademarks, the absolute grounds for refusal, previously placed only for trademarks consisting of the shape of goods are now applicable to any type of non-traditional trademarks;
• Classification of goods and services is to be made sufficiently clear and precise; specified general terms shall be literally interpreted. Owners of CTM with Nice Class Headings will be able to broaden its specification;
• Harmonization of national trademark registration procedures, including opposition, revocation and invalidity;
• Deadline for paying renewal fees;
• Extension of rights to prohibit the use of a sign as a trade or company name;
• More effective means to fight against counterfeit goods in transit;
• Simplification of several legal provisions to increase legal certainty;
• Introduction of an European Union Certification Mark;
• Foster cooperation between member-states’ IP Offices in developing modern search tools, databases and other measures to promote the protection of EU IP rights.

Furthermore, fees are changing. It will be possible to pay for the registration of a EUTM in 1 or 2 international classes instead of the previous required minimum of 3 classes.