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Changes to the Community Trade Mark System – Key Dates for Community Trade Mark Holders

Changes to the Community Trade Mark System – Key Dates for Community Trade Mark Holders

26/01/16

The EU trade mark reform legislative package was published on December 24, 2015 in the Official Journal of the European Union.  The publication put in motion the implementation of the various and significant reforms to Community trade mark law. 

KEY DATES FOR COMMUNITY TRADE MARK HOLDERS 

MARCH 23, 2016

  • The amending Regulation will come into force.  A summary of the most important changes introduced by the Regulation are available on our website, or by request.
  • The Office for Harmonization in the Internal Market will change its name to the European Union Intellectual Property Office.
  • The ‘Community’ trade mark will change its name to ‘European Union’ trade mark.
  • An updated version of the Guidelines for Examination will enter into force, reflecting the changes to practice brought about by the reformed legislature. 

MARCH 23, 2016 – SEPTEMBER 22, 2016 

  • Registrants of European Union trade marks filed before 22nd June 2012, which include claims to entire Nice class headings, may make a declaration that the intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal interpretation of the wording of that class heading.  The declaration will need to describe in a clear, precise and specific manner the goods and/or services that are now to be claimed (replacing the claim to the class heading).  If the declaration is filed within this period and the specification is acceptable to the Examiner the Register will be amended accordingly. 

Please note that as from the expiry of the period ending September 22 2016, the claims to goods and/or services in European Union registrations for which no such declaration is filed and accepted shall be deemed to extend only to a literal interpretation of the goods and/or services set out in the class heading concerned. 

This is a serious matter for Registrants to consider, as a failure to amend the claims within the relevant period could have the result of reducing considerably the scope of protection for the trade mark concerned in the EU, to the extent that it could interfere with the Registrant’s ability to protect its trade mark in the EU. 

24th SEPTEMBER 2017

  • The requirement that a trade mark is “capable of being represented graphically” will be eliminated.  The requirement has been replaced with the term “capable of ...... being represented on the Register in a manner which enables the competent authorities and the public to determine a clear and precise of the protection afforded to its proprietor”.  This should enable trade mark owners to formally protect a far broader range of trade marks in the EU, thus boosting their ability to trade with confidence in the European Union.  The EU Intellectual Property Office will provide details and information concerning the alternative media and formats that will be considered to comply with the new requirement.
  • It will be possible to apply to register a European Union ‘certification’ trade mark.
  • It will no longer be possible to make a priority claim, post application 

For further information please contact WP Thompson