一覧に戻る Important changes to the Regulation on the Community Trade Mark by the Regulation on the European Union Trade Mark:

On 23 March 2016 the Regulation on the European Union Trade Mark will enter into force and bring important changes which we summarize as follows:

1. The Community trade mark (CTM) will be renamed as European Union trade mark (EUTM or EU trade mark). Furthermore, the Office for Harmonization (OHIM) will be renamed as European Union Intellectual Property Office (EUIPO). Additionally, corresponding changes will be made with respect to other wordings, e.g. European Community will be replaced by European Union.

2. The official fees will be changed in the way that the basic application fee will no longer cover up to three classes of goods and services but only one class. Furthermore, the basic application fee will be reduced from EUR 900 to EUR 850 (for electronic filing) and there will be a new official fee for the second class of goods or services in the amount of EUR 50. Consequently, the official fees will be slightly smaller in case of a EU trade mark application in future in case of an application covering only one class of goods or services and will be the same in case of an application covering two classes of goods and/or services. Additionally, there will be additional official fees for each further class exceeding the first two classes in comparison to the previous system providing further official fees only for each further class exceeding the first three classes.

3. The renewal fees for EU trade marks will be reduced in comparison to the renewal fees for Community trade marks in the way that the renewal fees are reduced to match the application fees mentioned above.

4. There are some additional fee reductions, e.g. a reduction of the official fee for filing an appeal (from EUR 800 to EUR 720) or of the opposition fee (from EUR 350 to EUR 320).

5. With respect to the signs of which a European Union trade mark may consist the wording is changed from “capable of being represented graphically” to “being represented on the Register (...) in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. This change may possibly be important with respect to non-traditional trade marks like sound marks.

6. The EU trade mark will give its proprietor also the possibility to take action to prohibit preparatory acts in relation to the use of packaging or other means. Furthermore, the Regulation on the European Union Trade Mark provides the possibility to take action against goods in transit in certain circumstances.

7. The limitation of the effects of a EU trade mark that no action can be taken against the use of the name and address will - contrary to the situation in case of a Community trade mark - only apply with respect to use of the name or address of the third party where that third party is a natural person.

8. The rights of the proprietor of a EU trade mark will - contrary to the situation in respect of a Community trade mark - not only be exhausted if the goods are put on the market by the proprietor or with his consent in the European Union, but also if the goods are put on the market by the proprietor or with his consent in the European Economic Area.

9. The proprietor of a EU trade mark will not be entitled to prohibit a third party from using signs or indications which are not distinctive, provided that such use is in accordance with honest prac-tices in industrial or commercial matters. This amendment might be a possibility to handle ac-tions based on a mistakenly registered trade mark or actions taken on the basis of trade marks which lost their distinctiveness after registration.

10. There will be a transitional period for EU trade marks which have been applied for before 22 June 2012 to amend the list of goods and services, if the list of goods and services covers all class headings of the corresponding class. In this case the proprietors of EU trade marks which have been applied for before 22 June 2012 can declare that their intention at the time of filing had been to cover also goods or services which go beyond the literal meaning of the class headings. The aforementioned transitional period of six months will end on 24 September 2016.

Should you have any questions, please feel free to contact koerl@mueller-bore.de.

download Pdf