TRADEMARKS IN THE EUROPEAN UNION

A political agreement on European Union’s trademark reform package was reached last week that will bring important changes in the national and EU-wide trademark protection systems.

The European Commission announced last week that it has reached an agreement with the European Union Parliament and Council concerning the so-called “trademark reform package”.

The package addresses the need for greater harmonisation between national trademark systems within the European Union, and aims to bring the Community Trademark system, created over 15 years ago, up to date with the current business environment. It changes some Community trademark fees as well as renaming the Community trademark as the “European Union Trademark”, and the Office for Harmonization in the Internal Market as the “European Union Intellectual Property Office”.

What will change, and when

The package, approved after over two years’ discussion, still requires the formal endorsement of the European Parliament and Council, which is expected to take but a few weeks’ time. However not all changes will have immediate practical effects upon publication.

The agreed changes will be enacted by amending the European Union’s two main trademark laws: Regulation 207/2009, a.k.a. the Community Trademark Regulation, and Directive 2008/95, a.k.a. the Trademarks Directive.

European Union regulations become applicable immediately upon publication, while directives require implementation into national law.

Therefore most changes concerning the Community trademark and the Office for Harmonization in the Internal Market, since they are introduced by revising the Community Trademark Regulation, will take effect immediately (bar those that will apply only when the required secondary legislation is enacted).

Changes concerning national trademark systems will be introduced by amending the Trademarks Directive and will consequently need be implemented by European Union Member states into their national laws within a three-year term from publication.

Immediately applicable

Changes driven by amendments to the Community Trademark Regulation include the following

– Community trademark (CTM) renamed as “European Union trademark” (EUTM)

– The Office for Harmonization in the Internal Market renamed as “European Union Intellectual Property Office”

– New fees

The current Community trademark application fee includes up to three classes of goods. The new fee schedule will set a separate class fee for each additional class beyond the first, with the aim of making applications cheaper for single-class applications and diminishing broad claims for goods and services that are not essential to the applicant, thus ensuring a more balanced system. The same reduction of fees applies to renewals.

– Modernisation and streamlining of Community trademark provisions
– Legal and financial framework for more cooperation between the IP offices of EU member states and the Community trademark office.

Applicable in the future (up to 3 years after publication)

– Alignment of procedures before national IP offices (filing date requirements, standards for designation and classification of goods and services, opposition and cancellation)

– New rules on the protection of geographical indications, licensing and registration of collective trademarks

– More effective means to fight the importation into, or the transit through, the EU of counterfeit goods.