Check the scope of your EU trade mark! – The new EU trade mark regulation to enter into force on 23 March 2016

The new Regulation will enter into force on 23 March 2016. The most significant changes concern the classification of EU trade marks. As a result, the scope of protection of previously registered EU trade marks may change.

New classification practice

As required by the new legislation, the goods and services covered by EU trade marks must be clearly identified. The scope of protection of a mark will cover the goods and services exactly as they are specified in the list, while before it was possible to cover all goods and services in a class by using the class headings. This change of practice will also apply to EU trade marks filed on or before 22 June 2012.

The owners of EU trade marks are given a transitory six-month period (23 March – 23 September 2016) to adjust their registrations if they have been filed according to the former practice. After this period, all previously filed EU trade marks, whether or not their specification has been adjusted, will be interpreted as only covering the listed goods and services in their literal sense.

Changes in official names

After the reform, the name of the Office, which currently is Office for Harmonization in the Internal Market (OHIM), will be European Union Intellectual Property Office (EUIPO).  In addition, the official name of the EU trade mark, which currently is Community trademark (CTM), will be European Union trade mark (EUTM).

Official fees revised

The official fees will also be revised. In particular, the renewal fees will be reduced. While the application fee currently covers 1-3 classes, in the new system it will only cover one class. The application fee will be decreased, but an additional fee must be paid for each additional class. This makes filing new EU applications in two or more classes a bit more economic if done now than after the Regulation has entered into force.

We are happy to help you to protect your trademarks and to interpret and prepare the lists of goods and services for you.