Legal Updates

Changes to EU trade mark law

Written by Jim Dennis, Matthew Hiscox

On 23 March 2016, new EU trade mark laws come into force, which are set to alter the landscape of EU trade mark protection moving forward. The main changes are as follows:

Name changes

The Office for Harmonization in the Internal Market (OHIM) will be renamed the European Union Intellectual Property Office (EUIPO) and Community Trade Marks will be now be referred to as European Union Trade Marks (EUTM).

Fee changes

There will be a new fee structure for trade mark applications and renewals. The EUIPO will adopt a “one class” fee system instead of its current “three classes for the price of one”.

It is hoped that this will discourage applicants lodging trade marks in additional classes simply for the sake of it and in turn will act to declutter the register. To encourage applicants to adopt a “core” class approach, the EUIPO has reduced the cost of an application in one class from €900 to €850.

Conversely, an application in three or more classes will cost more.

Renewal fees have been significantly reduced, which will please many rights holders who have questioned why an application should cost more to renew than to file.

Classification changes

Following the IP Translator case, the European Court of Justice stated that the EUIPO had adopted an incorrect practice on the classification of goods and services. The new regulations have now provided a 6 month window for owners of EU Trade Marks to rectify trade marks in order to ensure that the mark is correctly classified.

Historically a number of trade mark owners and IP practitioners obtained protection in the EU using Nice Class headings as it was considered that by referencing a class heading it was presumed that an owner wished to protect all the goods and/or services within that class. The ECJ corrected this approach and it is now necessary to specify the individual goods and services required.

We recommend that owners of EU Trade Marks registered before 22 June 2012 review their current protection. If your goods and/or services are not correctly specified this can be detrimental to future enforcement efforts and it can also attract unwanted disputes. The deadline to amend and/or specify trade mark protection expires on 23 September 2016.

Contact Us

If you would like to discuss these changes in more detail or have any other questions around your branding requirements, please do not hesitate to contact Jim Dennis or Mathew Hiscox from our specialist Trade Marks team.

Contact the Author

Jim Dennis

Profile image of Matthew Hiscox

Matthew Hiscox

I joined Gordon Dadds in 2016 having worked for over 17 years in the field of Intellectual Property (IP). My career started at the UK Intellectual Property Office (UK IPO) where I gained invaluable experience in all areas of IP, with a predominant focus on trade marks. Since then I have worked for national law firms offering a full spectrum of IP services. I specialise in advising on IP rights, both contentious and non contentious. The services I provide range from clearance of brands, filing and prosecution of trade marks and designs worldwide, policing of IP portfolios, advising on trade mark, domain name and company name enforcement matters, developing international brand strategies, tactical applications and portfolio management. I am also highly experienced in managing, sub managing and developing worldwide IP portfolios and work closely with clients to streamline and manage portfolios cost effectively.

Gordon Dadds