Changes to European Trademarks
March 2, 2016
Update to our December 1, 2015 post Changes to the European Trademark System are Imminent, as of March 23, 2016, the Office of Harmonization in the Internal Market (OHIM) will have a new name. It will be known as the European Union Intellectual Property Office (EUIPO). The Community trade mark will be renamed the European Union trade mark.
A summary of noteworthy changes are as follows:
An application covers a single class, but additional classes can be added upon payment of additional per class fees. (The pay for one, get two extra classes for free no longer applies.)
Non-displayable signs such as smells and sounds may be registered. (Previously only graphically displayable marks were permitted.)
Applicant must clearly and accurately describe the goods and services in the classes in question. (Class headings are no longer permitted.)
Certification marks can now be registered.
Grounds for Refusal have been expanded. Namely adding, designations of origin, geographical indications, protected traditional terms for wine and traditional specialities. (Previously, there were limited substantive grounds that OHIM could assert to deny registration of a mark. )
Opposition Grounds have been expanded. Importantly, a revision of the relevant five year period for proof of use of the earlier mark in opposition proceedings to be the date of filing or the date of priority of the EU trade mark application, not the date of publication of the opposed mark.
National offices must implement within seven years procedures for revocation and nullification of national trademarks. (Presently, many EU member countries do not provide an administrative way to cancel a national trademark registration requiring all such proceedings to be in the court.)
“Goods-in-transit” procedures to prevent the EU from being used as a transit hub for counterfeit goods. These are new provisions that will require each of the EU member countries to implement in their customs regulations.
New prohibitions on the use of signs (marks) in comparative advertising where that advertising is misleading. Comparative advertising is permitted, but is more restrictive.
Again, we note that there are many companies out there fraudulently soliciting for payments. The EUIPO has restated its concern about these Fraudulent Solicitations in light of the potential confusion while the OHIM office changes its name to EUIPO and the CTM trade mark registration is renamed the EU trade mark. See our Fraudulent Solicitations link for additional information about the many entities soliciting misleading payments for services.