Extreme Makeover Europe – Reforms to European Union Trade Mark Law
As seems to be in vogue recently (see explanation of significant change to Canada’s trade mark law here) the European Union adopted legislation to overhaul its trade mark law.
The reforms are numerous and amendments to the regulations will come into force on 23 March 2016 (an updated trade marks directive, the harmonizing measure applicable to national trade mark systems of EU member states, will come into effect on 15 January 2019, to allow Member States time to bring their domestic legislation up to date).
In addition to re-naming of the Community Trade Mark to the “EU Trade Mark” and renaming the Office of Harmonisation in the Internal Market (OHIM) to the “European Union Intellectual Property Office,” more substantive changes include a new definition of what signs qualify as trade marks, new rules on how to specify goods and services in applications, and reforms relating to enforcement and dispute resolution matters. The new legislation also includes various provisions implementing rulings of the Court of Justice of the EU on a range of issues and many useful updates and clarifications of the law. There is also a revised fees structure, although overall the level of fees will not change dramatically.
Most pressing is the 24 September 2016 deadline for trade mark owners to file a declaration related to current CTMs with class heading protection. Historically, registrants in the EU used the class headings as the specification of goods or services on the premise the specification would be treated as a reference to all goods or services included in the class. The reform makes clear the class headings (and any other description) will be interpreted as covering “all goods and services clearly covered by the literal meaning of the indication or term”. The class heading will not be read as including a reference to all goods or services included in the class, insofar as the wording of the class heading does not literally cover such goods or services. To accommodate for the historic practice, the new legislation permits owners of existing EU trade marks filed before 22 June 2012 to file a declaration with the office by 24 September 2016, clarifying the intention.
Further details and analysis of the reforms can be found here.