New European rules for trademarks

Trademarks

On December 15, 2015 the European Parliament adopted the new European Trademark Regulation and Directive, which concerns both national and EU trademarks. Below is a summary of the most important changes.

Customs

It will be possible for trademark owners to prevent the entry of infringing goods and also their placement in all customs facilities. This applies in particular to goods in transit and even when such goods are not intended to be placed on the market of the Member State concerned. However, such action will not be possible in the case that the trademark owner is not entitled to prohibit the placing of the goods on the market in the country of final destination.

Costs per class

Instead of one fee for the first three classes, a fee per class is applicable for EU marks. The national offices have the option to adopt the “fee-per-class” system too.

Specification of goods and services

In 2012, the European Court of Justice decided that the designation of goods and services should be ‘sufficiently clear and precise’ and that the use of general terms shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication. This is now explicitly adopted in the new regulation.

Opposition deadline for EU designations in International Registrations

The opposition period for EU designations in International Registrations currently commences six months after publication. This has been changed into one month after publication. The opposition period remains three months.

Invalidation procedures at national offices

It will become possible to start a procedure for revocation or declaration of invalidity at the national trademark offices. In the Benelux it is currently necessary to start a legal procedure which can lead to considerable costs. Member States will now have to provide for an administrative procedure for revocation or declaration of invalidity.

The requirement of graphic representability

Currently it is required by law that a trademark is capable of being represented graphically. This requirement will be deleted and replaced by a more general requirement that the trademark should be represented in any appropriate form, as long as the representation is clear and precise. This makes it easier to register non-traditional trademarks, such as a sound mark.

'EU mark’ and ‘EUIPO’

Currently the EU trademark authority is titled ‘Office for Harmonization in the Internal Market (trade marks and designs)’. This is to be replaced by ‘European Union Intellectual Property Office’, or EUIPO. Although Community Trademarks were in practice already referred to as ‘EU trademarks’, this will now be formal terminology.

When will the changes enter into force?

The changes regarding the EU trademark will enter into force in March 2016. In the Benelux the directive must be implemented within three years. Member States should provide for an administrative procedure for revocation or declaration of invalidity within a longer “transposition” period of seven years.