Changes to European Trademark Legislation

From 23 March 2016:

a) changes to fees and the abolition of the single fixed fee for three classes;
b) additional declaration to keep the product and service list for the EU trademark up-to-date; and
c) cancellation and invalidity actions will no longer be brought before a court, but through the national trademark office.

New fees and the abolition of the single fixed fee for three classes*
The fees due for EU trademark applications and EU trademark renewals will be changed and will be calculated per class from now on. € 850 for the first class, € 50 for the second and € 150 for the third and subsequent classes.
* The ratio behind the new system is that the trademark registers are ‘becoming polluted by trademark applications that are not imited to the class for which they will actually be used, but also extend to ‘surrounding‘ or ’defensive’ classes. By charging an additional amount in this situation, the expectation is that applications and renewals are more likely to be limited to the products actually needed – and traded in practice – resulting in a clean-up of the register in time. Added to the above, the lower renewal fees will certainly yield a clear saving for trademark owners in the long term.

Additional declaration “up-to-date” to keep the product and service list for EU trademarks Further to the ’IP Translator judgment’, applicable to the product description were already fine-tuned three years ago. The list of goods must be produced in a manner that is ‘sufficiently clear and precise’ and the risk ensuing from an unclear description has been placed with the trademark owner. This case law is now being laid down in legislation. You have the opportunity, before 24 September 2016, to submit a declaration where indicate that applications, in which the so-called ’class heading‘ was included, covered all of the products in the class for which the applications were made, rather than the current view: ’protection limited to what has been clearly stated’.*
*The extent of protection provided by the class description has resulted in an unclear situation for trademark owners in particular. The legislator wanted to put an end to this situation by introducing a ’it-means-what-it-says‘ system for all EU trademark registrations, regardless of their application date. With this in mind, the submission of a declaration offers a group of trademark owners the opportunity to correct anything that is unclear in their class description. The class description is decisive when establishing the extent of protection that a trademark enjoys.

Cancellation and invalidity actions before the national trademark office Trademarks Directive requires EU member states to introduce a cancellation action in relation to the non-use of a trademark or an invalidity action in a situation where an older right exists, both to be brought before the national trademark office.*
/*The expectation is that it will be possible to settle proceedings brought before the Office faster and more cheaply than was previously possible before a court.

Minor changes
The publication date of EU designation in an International Registration (IR) will be brought forward. Trademark protection in the EU can be obtained via a direct EU trademark application, but also by means of an EU designation in an IR.

It will also become easier to take action against fake goods in transit, with the burden of proof being placed on the infringer.

Finally, the term ‘Community trademark’ will be replaced with ‘Union trademark’ and the EU agency, will now become the ‘European Union
Intellectual Property Office’.

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