New EU Trademark Directive Published

Background

2016 will see the some of biggest recent changes in the law of trade marks in the EU since the introduction of the Community trade mark ("CTM") in 1996. Regulation (EU) No 2015/2424 of the European Parliament and the Council ("Amending Regulation") amending the Community trade mark regulation has been published in the Office Journal of the European Union.

The Amending Regulation will come into force across Europe on 23 March 2016, 90 days after its publication date which was 24 December 2015. From this day, the Office for Harmonization in the Internal Market ("OHIM") will be replaced with a new name, the European Union Intellectual Property Office ("EUIPO") and the CTM will be replaced with European Union trade mark.

In addition, new Directive 2015/2436 was published on 23 December 2015 and this will aim to reform the national trade mark system in each member state by repealing existing Directive 2008/95. The new Directive will need to be implemented in each member states' national laws by 14 January 2019, with the implementing provisions coming into effect in each state a day later.

The overriding objective of the reforms will be to modernise the trade mark system around Europe. The aim is to adopt innovation and growth by making these systems more available, efficient and effective for businesses in terms of lower costs and complexity, increased speed, greater legal certainty and better protection against counterfeiting. Although it will be three years before changes happen at a national level, reforms at European Union trade mark level will be felt much sooner.

Changes to CTM application and renewal fees

From March, brand owners will benefit from a raft of changes, making it quicker, cheaper and easier to obtain EU-wide trade mark protection. Not least, brand owners will make significant savings on costs on new European Union trade mark registrations and renewals. From March, these fees will be reduced. It will be possible to register a trade mark in just one class for a reduced fee of €850 (a saving of €50 on the current fees).

Renewal fees will also be reduced from the current €1350 to €850 for renewal in one class. 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.

These fee reforms should make the European trade mark system genuinely accessible for smaller businesses and they should take this opportunity to gain registered trade mark protection. Larger businesses that already have registered trademarks should review their portfolios to assess whether Europe wide trade mark protection may be more cost-effective than maintenance of their existing national registrations.

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 in the EU.