Credit Fiona Boswell Fraser Brown Solicitors.
14 Apr 2016
As of the 23rd March 2016 new trademark laws came into force that affect the registration of trademarks in European Union. These new laws have come in to harmonize the laws affecting the trademark system in the European Union across all national states and are meant to address the modern business environment, streamline procedures and prevent anti-counterfeiting.
What are the key changes?
1. They have a new name – what were formerly known as community trademarks are now called EU trademarks and likewise the OHIM will now become the EU Intellectual Property Office.
2. Non graphic signs easier to register – it will now be easier to register signs such as sounds and smells.
3. Stricter rule for trademark classifications – the wording of trademarks will now be interpreted literally in line with recent case law. This means it is important that trademark owners take care to ensure that all goods and services that the mark is or will be used for are included in the class specification. If you already have a EU trademark which was filed before 22 June 2012 you have until 23 September 2016 to extend your registration to cover goods and services included in your class heading that you didn’t include when it was filed. Your register entry will then be amended accordingly but the additional goods and services can only be used to prevent copycat use from the date of the change.
4. Use of Registered TM as a Company Name is an infringement – watching service subscription recommended for trademark owners.
5. Trademark Rights automatically included in transfer of the business – unless there is clear agreement to the contrary a business’ trademarks will automatically transfer when a business is sold.
6. It’s cheaper to register EU trademarks – business can now choose to register in one, two or three classes instead of having one fee for up to three classes. Fees have also reduced for renewals, oppositions, invalidity, revocation and appeals.
7. Defences, Infringements, Refusal and Invalidity, Licensees Rights to Sue – there are other more complex changes concerning defences to infringement, grounds for refusal and invalidity and licensees right to sue.
Word to the wise.
Protecting your brand is a key part of any business as it is often its most valuable asset.
If you are a EU trademark owner you should:
1. Ensure that the goods and services listed in your classifications cover all that your brand is or will be used for before 23 September deadline occurs if you registered your brand prior to 22 June 2012.
2. Implement watching services to prevent others using your brand as a company name.
If you are thinking of registering a EU trademark it is now a good time to do so as the fees have gone down and the type of signs that are capable of registration has increased.