Important news - European trademark law changes

After a revision of the EU trademark system the EU trademark law has been reformed. Various changes will become effective as from 23 March 2016. Although there are many changes, the most important ones are set out below.

Classification requirements

The descriptions of products and services in trademark applications are becoming increasingly specific. Until 2012, the European trademarks office held that trademark registrations filed for the so-called ‘class headings’ covered everything under such a general class heading. Following case law in 2012, trademark applications filed before 2012 may now be specified further as far as goods and services are concerned. This is relevant if a trademark is intended for goods or services that are not mentioned (or included in terms) in the class heading used in the registration.

We will shortly send you more information about which steps you will need to take to correct this. Bear in mind, however, that only a very few trademark registrations will need to be amended as the changes apply only to EU trademark registrations predating 2012, and only for trademark registrations filed for a class heading.

For instance: class 25 trademarks are often registered for the class heading, namely ‘clothing, footwear, headgear’. The product ‘soles’ (for shoes) is not covered under this general class heading. A soles manufacturer who has registered a trademark for ‘clothing, footwear, headgear’ should specify it’s the registration by specifically adding ‘soles’.

Fee changes

The trademark register is cluttering. To discourage people from filing of applications in for more classes than necessary, it was decided to amend the official fee system. As from 23 March 2016, fees are paid per class rather than for one up to three classes. So it will be effectively cheaper to file a EU trademark application for a single class !

Renewing an existing EU trademark registration will become cheaper as well. The official fee system for renewals will be similar to the one for the filing of new applications.

No more graphical representation requirement

It will no longer be required that a trademark must be represented graphically when filing an application. This means that it will become possible to register trademarks which may be difficult to represent graphically , such as smells or sounds. This will be possible as from October 2017.

Terminology

The European Trademarks Office (know to many as “OHIM”) will be called “European Union Intellectual Property Office” (EUIPO). The term “Community trademark” will be changed to the “European Union trademark”.

If you would like to discuss how the changes will affect your trademark portfolio, please do not hesitate to contact your trademark attorney. We will contact you shortly about the steps you will need to take, if any, to specify your EU trademark registrations for general class headings.