The End [of EU trademark law as we know it] is Nigh!

O.K., that may be overstating things a bit, but big changes are on the horizon for trademarks in the EU.  As background: member nations of the EU maintain their own trademark regulations and registration systems, and are also part of a separate EU body called the “Office for Harmonization in the Internal Market” (“OHIM”), which is responsible for the administration, registration and maintenance of “Community Trademarks,” which cover all of the EU.

The changes generally seek to harmonize the trademark laws of the various EU members and OHIM (which is, thankfully, being re-named the “European Union Intellectual Property Office”), with some of the more imminent changes relating solely to Community Trademarks (which are being re-named “European Union Trade Marks”).  While a full listing of the changes is beyond the scope of this humble blog post, some of the major changes are the following:

• New European Union Trade Mark applications will only cover one class of goods/services in the basic filing fee (current practice includes up to 3 classes).

• The cost of renewing a CTM registration will be reduced.

• The scope of protectable marks is being increased, as the requirement that a mark be capable of graphic representation is being deleted.

• The listing of an entire class heading in the description of goods/services will be interpreted to only include those items clearly covered by the literal meaning of the indication or term in the heading.

• All member nations will eventually be required to implement administrative opposition, cancellation and invalidity procedures (some countries currently require costly court filings to accomplish these goals).

• Holders of European Union Trade Mark registrations will be able to file infringement suits against infringing goods passing through the EU, even if the goods’ ultimate destination is outside of the EU. This is meant to prevent (or at least slow) the flow of counterfeit goods though the EU.  The importer may be able to escape such liability, if they can show that the goods would not be infringing in the ultimate destination country.

Although the changes that are directed to EU member countries will not take effect for at least 3 years (and, in at least one case, for 7 years), many of the changes addressing the CTM/EUTM system (including the fee changes) are expected to come into effect on March 23, 2016.  In some instances, it can be beneficial to take action prior to that, while in others, delaying action until the changes are “official” may make sense.

If you have questions about how the changes affect your particular trademarks, consulting an experienced trademark attorney is recommended.