On 23 March a new Regulation will come into force which will alter the Community Trade Mark system in the EU. Here we discuss the main changes that will affect holders of EU trade marks, and those interested in EU trade marks.

  1. New Names

The OHIM (Office for Harmonisation in the Internal Market) will now be called the “European Union Intellectual Property Office” or “EU IPO”. Similarly, the CTM (Community Trade Mark) will change its name to “EU Trade Mark” or “EUTM”.

  1. New Fees and the end of “buy one, get two free” on Classes

The introduction of the new Regulation will see fees charged for each class included in an application, rather than the current system which offers the ability to file in up to three classes for the price of one. This change will also affect the costs of renewals of CTM’s. The table below provides an overview of the changes to fees:

  Current Fee New Fee Current Fee New Fee
1 Class €900 €850 1 Class €1350 €850
2 Classes €900 2 Classes €900
3 Classes €1050 3 Classes €1050

 Under the new fees, every additional class after the third will be €150.

  1. Changes to Class Headings

Under previous practice, it was possible to file a trade mark application claiming a broad ‘Class Heading’ list of goods and/or services. Any trade mark application filed using a Class Heading was assumed to include all of the goods or services in that class.

But following the Decision in a test case brought before the EU Courts, Class Headings no longer cover all goods in that class, instead those items listed are to be given their literal meaning.

The new Regulation is providing the owners of CTMs filed before 22 June 2012, which incorporate a “Class Heading” for its specification of goods and/or services, to file a Declaration to more precisely identify the goods and/or services to be covered by their trade mark registration. The period for filing these Declarations is open from 23 March 2016 to 23 September 2016.

An example: Your trade mark was registered on 1 January 2010 and covers the Class Heading of Class 12: “Vehicles; Apparatus for locomotion by land, air or water”. Under the previous system this specification would cover all of the items contained in Class 12, from airplanes and locomotives, to pushchairs and fishing boats.

The new system means that your trade mark will be registered in respect of vehicles, and apparatus for locomotion by land, air or water only. This could be sufficient if you use your trade mark for, say, boats but if you actually sell ‘air pumps for bicycles’ (which also falls in Class 12) then your trade mark could be at risk in the future should you come to rely on it against a third party, or if you are challenged by a third party.

  1. Company names can now infringe registered trade marks

Another change introduced by the new Regulation is that use of a registered trade mark as a trade or company name, or as part of a trade or company name, is now a specific form of infringement.  Owners of EU Trade Marks are advised to consider putting a ‘Company Name’ watch in place so that they can object to new company incorporations, and conversely, anyone looking to commence trading under a new name, or incorporating a new company name, should consider a search of the EU Trade Marks register first.

  1. Search reports

Presently, on receipt of a trade mark application, the Office will conduct a search for identical and similar trade marks of the CTM register and report the results of that search to the owner before then sending details of the application to the holders of those cited earlier rights. Under the new Regulation, such a search report will only be prepared if requested at the time of filing the application, and an appropriate search fee will be charged. This search will, however, also include a report of searches conducted by the national office of each member state.

Regardless of whether an applicant requests such a search report, upon publication of the trade mark application, the Office will notify holders of identical or similar earlier EU rights.

  1. Some other points to note
  • The so-called ‘own name defence’ will only be available to natural persons (individuals) under the new Regulation, and legal persons (partnerships, companies) will no longer be able to rely on this as a defence for using or applying to register the name or address of a third party.
  • The prohibitions which previously applied to shape trade marks have now been amended to apply to all ‘non-traditional’ trade marks (such as colours and sounds), so these trade marks must not (i) result from the nature of the goods, (ii) be necessary to obtain a technical result, or (iii) give substantial value to the goods.
  • It will be possible to transfer the whole or part of a trade mark separately from the sale of a business, but this needs to be specifically stipulated otherwise trade marks will be included in sales/transfers of businesses.
  • Any goods or packaging which bear a trade mark identical to an EU Trade Mark, and which is used on goods covered by that trade mark registration could be prevented from being brought into the EU, even if those goods are not intended to be sold in the EU. But the owner of the EU Trade Mark will not be able to prevent goods in transit if they are not entitled to prevent the goods being placed on the market in the final destination country of the goods. This would need to be proved by the owner of the goods.

image for IP blog

If you wish to discuss any of the issues raised above, please contact Simon Miles – Partner, Clare Grimley – Trade Mark Attorney, or any member of the Edwin Coe Intellectual Property team.

Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.

Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.

Please also see a copy of our terms of use here in respect of our website which apply also to all of our blogs.

Latest Blogs See All

Share by: