EU Trade Mark Law Changes: Things to think about NOW

30 November 2015

Mark Holah, Patricia Collis

2016 will see the biggest changes to trade mark laws in the EU since the introduction of the Community trade mark (CTM) in 1996. A new EU Trade Marks Directive will come into force in January 2016, though it will be some time before this has much effect. More pressing is that a new CTM Regulation will also come into force, with the changes being effective by April 2016 (at which point CTMs will change name and become European Union trade marks).

It would be a mistake to ignore the changes until 2016: there are a number of things trade mark owners should think about before the changes happen. There are four key things in particular that should be considered now, especially if you need EU-wide protection.

Wide CTM specifications

If you have CTM registrations covering the "class heading" in any class of goods and/or services, you should consider amending your registrations now. If you don't, the new laws are very likely to lead to your protection becoming weaker. This is because class heading terms in registrations will be interpreted more narrowly once the new laws come into effect. While there will be a way to counter some of this potential damage, through a special "sunrise period" for certain CTM registrations, this is not ideal. It is a much better idea to amend your registrations now, as this will allow many trade mark owners to have more control over the changes to their coverage and thus maintain stronger protection than if they wait until the sunrise period. 

Changes to CTM application fees

As of April 2016 CTM application fees will no longer cover up to 3 classes. Instead, only one class will be covered by the basic fee, which is being lowered. There are two impacts of this.

First, if you only need to cover 1 class, your application will be cheaper, although the fee is only lowering by €50, so it is not worth delaying applications until April (unless you can claim priority from an earlier application filed in a different country).

Second, if you need to cover 3 or more classes, your application will be more expensive. The cost will increase by €150 per class over 2 compared to current costs. This means you should consider filing any applications in multiple classes before April 2016 if possible.

Changes to CTM renewal fees

All CTM renewal fees will be going down, no matter how many classes there are in a registration. This means you should consider delaying the renewal of all CTM registrations due for renewal in or after April 2016 until the fees change.

There is also a way that fees could be saved for registrations due for renewal before April 2016: it might be possible to use the 6 month "grace period" to save fees by renewing late. Even taking into account a 25% late renewal surcharge, this could save a substantial amount in renewal fees (although this should not be tried until we have seen final confirmation of the new Regulation as this loophole may be closed).

Stopping counterfeits going through the EU

Under the new laws, if you have a CTM registration you can seize any counterfeit goods in transit through the EU, even if those goods are never targeted at EU consumers, unless it can be shown that there is no trade mark infringement in the country of final destination (the burden is on the "infringer" to prove this).

As a result, all trade mark owners having problems with counterfeits outside the EU should consider obtaining EU trade mark registrations and EU customs registrations, even if they have no counterfeit problems (or even, arguably, no business) in the EU.

There is enough time to get the necessary registrations in place if applications are filed quickly.

There are other changes that you need to be aware of, but these will be reported before they come into force: the 4 issues in this article are the issues you should focus on now, a few months in advance of the changes taking effect.

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