Yesterday, March 22, 2016, the Office for Harmonization in the Internal Market (OHIM), the organization responsible for assisting trademark owners in protecting their trademark rights across the European Union, was closed, poised to reopen as the new European Union Intellectual Property Office (EUIPO). Upon reopening this morning as the EUIPO, one of the first visible changes was that Community Trademarks (CTMs), which grant registrants rights in their marks throughout the European Union (EU), are now referred to as European Union Trademarks. This change is far more than a simple name change, however, ushering in significant substantive changes affecting those having or interested in procuring trademark rights throughout the EU.
For those who already own a registered CTM, the most important change, requiring immediate action in most cases, is a change to the way goods and services recitations are interpreted under the new regulations. Under the OHIM system, a "class heading", which describes the general types of goods and services registrable in a given class, could be used by a savvy applicant to extend protection of a mark to all goods and services belonging to a particular class. Under the new system, this is no longer the case. Like in the US, goods and services recitations will now be read literally. This change will substantially affect the enforceability of current CTM registrations if nothing is done! CTM owners will have six months to amend their goods and services recitations in accordance with these new regulations to avoid a loss of rights. Please contact us immediately if this applies to you so that we may determine if this change impacts your rights.
Another notable change is the transition from a basic fee application fee structure that covered up to three classes of goods and services to a 'pay-per-class' system. This system is very similar to the system the United States Patent and Trademark Office (USPTO) currently employs. Under this new pay-per-class system, applicants interested in obtaining protection for only a single class of goods will receive a slight discount as compared to fees under the previous OHIM system while those interested in obtaining protection in three or more classes will pay a slight premium. Fees for obtaining protection in two classes of goods under the new system are comparable to applying for protection in three classes under the OHIM system. Notably, renewal fees are significantly reduced under the new system, regardless of the number of classes registered.
Also of interest to potential applicants, certification marks will become registrable throughout the EU around late December of 2017, or about 21 months following the creation of the EUIPO. The registration cost for an EU certification mark is anticipated to be similar to the cost of registering an EU collective mark.
Other noteworthy changes include new anti-counterfeiting provisions, allowing a mark owner to prevent the shipment of goods bearing a registered mark without authorization, new proof of use requirements, allowing competitors to challenge mark owner's rights based on non-use five years after registration, new and more efficient revocation actions, an accelerated opposition, the stoppage of searches for prior-registered marks, the use of a company name or trade name that is "confusingly similar" to a registered mark will now constitute infringement, marks of significant reputation will prevent registration of later filed marks whose registration would be considered detrimental to the distinctive character of the earlier mark and, like in the US, acquired distinctiveness will allow the registration of descriptive marks.
These changes are the first major reforms since CTMs were introduced more than fifteen years ago. They are anticipated to make such protection more cost-effective, accessible and predictable.
Officially, these changes took effect on March 23, 2016, the date on which the Amending Regulation entered into force. For those of you who may be interested, the full text of the amending regulation, regulation (EU) No 2015/2424 of the European Parliament and Council, has been published in the Official Journal of the European Union and is accessible here: Regulation (EU) No 2015/2424.
Matthew J. Curran, Associate