Haven’t heard of the European Union Intellectual Property Office yet?

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Then it’s time to familiarize with the amended Community trademark System!

The Regulation (EU) No. 2015/2424 amending the Community trade mark regulation will enter into force on 23 March 2016. The full text can be found here. It brings a few changes to the current Community trademark system. One of the most notable changes is OHIM’s name which is now “European Union Intellectual Property Office” and the Community trademark itself which is now the “European Union trademark”.
Need for immediate action exists for owners of Community trademarks filed before 22 June 2012 which protect the entire class headings of one or more Nice Classes. Article 28(8) of the amending Regulation allows for a transitional period of six months during which proprietors of these marks registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that class heading. Examples for terms not covered by the literal meaning of the class headings can be found here.
Some of the further relevant changes in the new Regulation are listed below:

  • The fee system will change. Application and renewal fees will be per class, also for the first three classes.
  • The EU trademark application no longer needs to be represented graphically, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
  • Introduction of a EU certification mark
  • Disclaimers are no longer permissible.
  • It is explicitly stated that the Office may re-open the examination of absolute grounds on its own initiative at any time before registration.
  • Third party observations should take place before the end of the opposition period or, where an opposition against the trade mark has been filed, before the final decision on the opposition is taken.
  • Specific grounds for opposition and cancellation on the basis of Protected Designations of Origin and Protected Geographical Indications will be introduced.
  • The date for determining the necessity to submit proof of use in opposition proceedings will be no longer the publication of the EU trademark application to be attacked, but its filing or priority date.
  • The opposition period for International registration designating the European Union will start one month after the date of publication.