EU to modernise the European trademark system

The European Commission has issued a press release on the April 21st that details changes that have the goal of modernising the EU trademark system, adapting it to the Digital Era and promoting its use by Small and Medium Enterprises (SMEs).

First and foremost, the “Office for Harmonisation in the Internal Market” (OHIM) will change its name to “European Union Intellectual Property Office” (our suggested short name, EU IP Office). Also, the “Community Trademark” will change to “European Union Trademark” (EUTM).

Secondly, there are several new measures that include:

• Simplification of the registration of sound or hologram trademarks and other new types thereof;
• Harmonisation of national registration procedures, including opposition, revocation and invalidity procedures;
• More effective means to fight against counterfeit goods when travelling through the EU;
• Simplification of several legal provisions to increase legal certainty, also introducing 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, using the 300 million € OHIM surplus.

Finally, fees are going to be reduced, namely application and renewal fees. The fees will start to take into account applications and renewals for trademarks filed in 1 or 2 international classes, instead of starting directly with the 3rd class. Renewal fees will be more steeply reduced. This changes are intended to help SMEs better protect their trademarks and not pay for classes that they would not be using.

In order to implement this EU trademark package, the EU Parliament and Council will have to formally agree in changing the Trademark Directive and the Community Trademark Regulation, after agreement was reached in the informal “trilogue discussions”. After these institutions complete the necessary legal procedures, the new Regulation will be automatically effective throughout EU, although the Directive will require transposition into national laws within a deadline of 3 years.