The EU Trademark Regulation (2015/2424/EU) amending the Community Trademark Regulation entered into force on 23 March 2016 (the “new Regulation”). The new Regulation is part of the EU trademark reform legislative package that also includes the replacement of the existing EU Trademarks Directive (2015/2436/EU). Some of the main changes brought about by the new rules are briefly outlined below.
Name Changes
In order to adapt the terminology to the Lisbon Treaty, Community Trademarks (CTM) are now called European Union Trademarks (EUTM), and the Office for Harmonization in the Internal Market (OHIM) has been re-named the European Union Intellectual Property Office (EUIPO).
New “One-Fee-per-Class” System for Applications
Until recently, the basic application fee covered up to three classes of goods or services. If the applicant wished to register the trademark in one class only, it still had to pay the basic fee. The new Regulation now introduced a new “one-class-per-fee” structure. Additional fees must be paid for each class beyond the first.
The basic fee for an electronic application covering up to three classes under the old rules amounted to EUR 900. The fee for each additional class was EUR 150. Under the new Regulation, the basic fee for one class is EUR 850. The fee for two classes corresponds to EUR 900, and for three classes, EUR 1,050. The fee for each subsequent class remains EUR 150.
These new fees also apply to the renewal of trademarks, which under the old rules amounted to EUR 1,350 up to three classes and EUR 400 for each subsequent class.
Opposition, cancellation and appeal fees have also been reduced.
New Scope of Protection for Class Heading Designations
It used to be common practice of trademark applicants to use class headings of the Nice Classification to designate the goods or services for which protection was sought. Class headings, in effect, were considered by the OHIM to protect all of the goods and services within a particular class (the so-called “class-heading-covers-all” approach).
A decision by the Court of Justice of the European Union (CJEU) dated 19 June 2012 changed this approach. The Court decided that an applicant using the general indications of a particular class heading must specify whether its application is intended to cover all of the goods or services included in the alphabetical list of the particular class, or only some of those goods or services (C-307/10, “IP Translator”, para. 61). This decision thus limited the “class heading-covers-all” approach to cases in which the applicant clearly expressed the intention to cover all of the goods or services in a particular class.
This principle has now been adopted by the new Regulation, according to which the use of class headings shall be interpreted as including only the goods or services clearly covered by the literal meaning of the indication or term used (Article 1(28) No. 5 of the new Regulation, amending Article 28 No. 5 of the Regulation 207/2009/EC).
This new rule entered into force on 23 March 2016. However, owners of trademarks applied for before 22 June 2012 that utilize the entire class heading of at least one Nice class are given the opportunity to declare to the EUIPO until 24 September 2016 that they would like to add further goods and services to their registration in order to conserve the originally intended scope of protection. This may compensate for the narrowing of scope otherwise caused by the new interpretative practice. If no such declaration is filed, the registration will only cover the goods and services that fall within the literal meaning of the terms used.
The potential amendments to the trademark register following trademark owners’ declarations might lead to disputes between such owners and undertakings having registered identical or similar signs at a later date for specific goods or services within the class. The solution of such cases is likely to depend to a great extent on the circumstances of each case.
Conclusion
The new rules will have a significant impact on EUTM owners and undertakings seeking to apply for trademark protection in the EU. Future blog entries will deal with some of the further changes accomplished by the new Regulation, concerning, for instance, anti-counterfeiting provisions of the new Regulation, and the possibility to protect as trademarks signs that are not capable of being represented graphically, such as, potentially, tastes or scents.