In accordance with the new Regulation (EU) No. 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation (EUTMR Regulation), which was enacted in December 2015, the EU Trade Mark System is being reformed and revised and certain changes to the system will be introduced with effect from March 23 2016:

The name of the Office

The semi-ambiguous title of the Office (Office for Harmonization in the Internal Market) will change to the more obvious and practical European Union Intellectual Property Office (EUIPO).  Trade Marks applied for or registered at that office will in future be known as European Union Trade Marks (EUTMs) rather than Community Trade Marks.

New fees

When filing a trade mark application, it will no longer be possible to cover three classes for the price of one. Instead of an Official fee of €900 for up to three classes and €150 for each additional class, the Official fee will now be €850 for the first class €50 for the second class and €150 for each additional class.

The same fee structure will also apply to the renewal of a European Trade Mark Registration.

Change of Renewal date

Previously, the date of renewal of a trade mark registration was the last day of the month in which the renewal fell due. A Renewal fee will now have to be paid by the anniversary date (i.e. a registration initially applied for on April 20 2007 could have been renewed up to April 30 2017 but will now be due for renewal by April 20 2017).

Change in the proof of use period for oppositions.

In an opposition, the Applicant is entitled to request the Opponent to prove use of the trade mark upon which the opposition is based if the trade mark has been registered during the period of five years preceding the date of publication of the Community trade mark application. That period for which proof of use can be requested has been changed and will be five years prior to the filing or priority date of the opposed application whichever is the earlier.

Class Headings

The EUTM Regulation follows the Trade Mark Directive in stating that the general indications included in the Nice class headings may be used as long as they provide an accurate indication as to what goods and/or services are covered by the application. Proprietors of Community Trade Marks which were filed prior to June 22 2012 can declare that the Nice headings set out in their specification were intended to cover all of the goods and/or services in the particular class or classes and not just the goods and/or services covered by the literal meaning.  Such a Declaration must be made within 6 months of the entry into force of the EUTM Regulation (i.e. by September 23 2016) and needs to indicate in a clear and precise manner the additional goods and/or services other than those clearly covered by the literal meaning. In the case of a European Trade Mark where no such Declaration has been filed within the prescribed 6 month period, such a trade mark registration will be deemed as only extending to those goods or services clearly covered by the literal meaning of the Nice classification indications.

This Regulation is unlikely to apply to applications filed by MacLachlan & Donaldson as we never sought protection for class headings unless we were sure that the literal meaning of the class headings covered the goods/services of interest to the Applicant but we should be pleased to review your portfolio of trade marks if requested.

Graphic Representations of Trade Marks

In order to allow for more flexibility while also ensuring greater legal certainty with regard to the means of representation of trade marks, the requirement of graphic representation is to be deleted from the definition of an EU trade mark. A sign will be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. As a result, it should be easier to file trade marks such as sound or smell marks.  This change does not come in to effect until September 24 2017.

Opposition period of International registrations designating the EU

The opposition period against international registrations designating the EU which currently commences six months after publication, will change to one month after the date of publication but the actual opposition period itself remains at three months.

Certification Marks

Another new development will be the ability to file applications to protect Certification Trade Marks. This change comes in to effect from September 24 2017.

If you would like to discuss any aspect of the changes you can contact us at mail@maclachlan.ie or by contacting any of our trade mark attorneys contact details for whom can be found on our website www.maclachlan.ie