The New European Union Trademark

The European Parliament and Council have reformed and modernized the almost 20-year-old Community trademark law with the passing of Regulation (EU) 2015/2424, which came into force on March 23, 2016. The most obvious change is the name of the European trademark: The former Community Trademark (also known as the EU Trademark in Germany) is now called the European Union Trademark.

The relevant role and the basic idea of the European trademark remains the same. The European Union Trademark also offers equal protection in all countries of the European Union, the same as the Community Trademark did. Application and registration are still performed by the Office of Harmonization for the Internal Market, the new name of which is the European Union Intellectual Property Office, or EUIPO.

Some significant changes occurred as a result of the modernization:

I. New fee system: “Pay per class”:

More favorable fees for application, cancellation procedures, opposition proceedings, and appeals procedures:

The application and renewal of trademarks became slightly more favorable in terms of cost on March 23, 2016. The same applies for most procedural fees.

Application fees have been changed to a “pay-per-class system”, that is the application fee for a trademark no longer includes 3 goods and services classes, but only one. Any other desired goods or services class must be paid for. The registration of a trademark in only one class has thus become somewhat more favorable in terms of cost. Applying for three or more classes has become minimally more expensive, the difference to the previous price is €150.

The renewal fee has become much more inexpensive, especially for trademarks with many classes. The fees for cancellation procedures, opposition proceedings, and appeal procedures have fallen by about 10% each.

In a comparative overview, the changes, in terms of numbers, are as follows:

 

Community Trademark
(previous)

European Union Trademark
(new)

Registration Fee € 1,050.00 /electronic registration:
€ 900 (including 3 goods
and services classes)
€ 1,000.00 /electronic registration:
€ 850 (including 1 goods
and services class)
Class fees € 150.00 beginning with the 4th class € 50.00 for the second class
€ 150.00 for each class
beginning with the third class
Renewal Fee € 1,500.00 /electronic renewal:
€ 1,350.00 (including 3 goods
and services classes)
€ 1,000.00 /electronic renewal:
€ 850.00 (including 1 goods
and services class)
Class Fees for Renewal € 400.00 beginning
with the 4th class
€ 50.00 for the second class
€ 150.00 for each class
beginning with the third class
Opposition Proceedings € 350.00 € 320.00
Cancellation Proceedings € 700.00 € 630.00
Appeal Proceedings € 800.00 € 720.00

 

II. Changes to the description and classification of goods and services – with retroactive effect!

The inclusion of general terms cited in the classification for the goods and services to be protected under the trademark does not guarantee anymore – as it did before – that all goods and services defined in this class are actually protected. This is also retroactively applicable for Community Trademarks that were filed before June 22, 2012. To the extent that there is a need to specify the goods and services protected by the previous registration, this must be done by September 24, 2016.

The scope of protection of the trademark is defined by the description of the goods and services classification. All goods and services are assigned to classes, and for each goods and services class the general terms identified in the title essentially show what types of goods and services are included in this class.

Quite popular and still allowed is to provide only the general terms of a class, not the contained specific goods/services that are actually offered or sold under the trademark. While it was applicable to all Community Trademarks registered before June 22, 2012 that all goods/services defined in this class according to the classification should be protected through the trademark with the indication of all general terms of a class, this practice has since changed with the judgment of the ECJ dated June 19, 2012 (C-307/10 – IP Translator ). Since the judgment the general terms and titles of the classes do not include all goods/services defined in the classes, but only those that fall under one of the specified general terms according to their literal sense. In the classification there are, however, goods and services that are not covered by the general terms of the corresponding class in the literal sense.

The Office of Harmonization for the Internal Market has worked towards a corresponding classification of goods and services covered by a previous trademark that were registered after the judgment had been handed down on June 22, 2016 and has accordingly changed its practice in regards to the registration process. However, the principles of the judgment are now enshrined in law through the European Union Trademark Regulation, and indeed affect the old Community Trademarks registered before June 22, 2012. For these, the goods and services covered by the previous trademark, insofar as general terms were used, must be checked to see if there is a need for specification. Appropriate amendments and specifications of the goods and services covered by the previous Community Trademark are possible at the EUIPO until September 24, 2016. Otherwise, trademark holders run the risk that a good or service actually offered under the trademark is no longer covered by trademark protection.

III. The most important procedural changes:

  1. Registration process
    Application for a European Union Trademark is only possible at the EUIPO. The graphic representation of the trademark in the application is no longer necessary.
    The EUIPO is now exclusively responsible for the application process. It is no longer possible to submit applications for a European Union Trademark through the national trademark offices. When registering it is no longer necessary to graphically display the trademark. This should simplify the registration of, for example, sound trademarks and scent trademarks, the graphic representation of which is often difficult. However, a technically possible form that is clear, comprehensible and permanent must be selected for registration and recording of the trademark. The requirement of graphical representation was not immediately eliminated with the introduction of the European Union Trademark Regulation, but on October 1, 2017 it will be. Functional marks, such as color or sound trademarks, are immediately subject to the same rules as shape marks.
  2. Opposition Proceedings
    The deadline for the opposition to the registration of an international trademark in which the EU is named is extended by one month.
    The period does not begin, as usual, with the publication of the trademark or the international registration, but one month after the publication, which in effect leads to an extension of the expiry of the opposition period.
  3. Invalidity Proceedings
    If the absolute protection of the trademark is disputed during invalidity proceedings, the examination of EUIPO must be limited to the facts and arguments presented by the parties.
    The limitation to the arguments of the parties in invalidity proceedings because of absolute grounds for refusal of protection had previously been the practice of the Office of Harmonization for the Internal Market in order to avoid having to once again conduct a comprehensive protection assessment of the trademark after registration, which was contrary to the principle that the protective capability of a trademark that has been applied for is to be reviewed before registration. The prohibition of a subsequent comprehensive review of protective capability was, however, not enshrined in European Trademark Law. This gap was closed in the European Union Trademark Regulation and provides more legal certainty.

IV. European Union Certification Marks:

Beginning on October 1, 2017, there will be a new type of trademark: the European Union Certification Mark. Holders of trademarks can thus ensure the use of a certain material, the way of production of goods or provision of services, or a certain quality or property of goods and services with the exception of geographic origin.

An addendum is required for the European Union Certification Mark, indicating the persons authorized to use the mark and the guaranteed properties as well as the monitoring body and modalities for ensuring these properties. The European Union Trademark can only be registered by natural or legal persons who engage in any commercial activity involving the supply of goods and provision of services for which a guarantee exists. Independent persons or organizations must also assume this guarantee. With the need for an addendum and the opportunity to let the mark be used by a variety of people when certain prerequisites are met, the Certification Mark is structurally similar to the Collective Mark (also named Shared Trademark), which is regulated in the same section of the European Union Trademark Regulation. However, the protective use of Collective and Certification Marks are very different. While the Collective Trademark serves to protect goods and services of members of an organization, which is the trademark holder, and to distinguish them from the offers of other non-organization members, the new Certification Mark serves to distinguish goods or services, the properties of which are guaranteed by the trademark holder, from those for which such a guarantee does not exist.

Recommended Action:

For European Union Trademark Holders

Holders of European Union Trademarks, which were registered as Community Trademarks before June 22, 2012, should

  1. have their services that were previously covered reviewed as to whether this includes general terms of goods and services classes that do not literally include the goods and services specifically offered under the trademark.
  2. specify the goods/services previously covered vis-a-vis EUIPO by September 24, 2016 or have this performed by specialists, if necessary.

For Trademark Strategy

In regards to brand strategy, it should be considered as to whether European Union Trademark applications for trademark portfolios are a possibility, even in addition to existing or planned national trademark applications. Simplifying procedures and transparency as well as fee reduction are supportive of taking such action. Providers of goods and services, for which Certification Marks are registered, should check up on Certification Marks and should look to a possible use of the Certification Mark by incorporating this into the mark addendum, if necessary, when the prerequisites of the goods or services offer are met.

We are happy to assist you if you have any further questions or would like to be advised.

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Tags: #Intellectual Property

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