EU Trade Mark (EUTM) reform - don't lose your protection

trademark-protection

EU Trade Mark (EUTM) reform - don't lose your protection

s your EUTM safe?

On March 23rd, 2016 a new EU Regulation (EU/2015/2424) came in to force which could have significant impact on the validity of your EU Trade Marks (EUTM).

What's changing?

There's some name changing you should be aware of..

  • Community Trade Marks (CTMs) become EU Trade Marks (EUTMs)
  • The EU body responsible for organising all of this, the Office of Harmonization in the Internal Market (OHIM) will become the European Union Intellectual Property Office (EUIPO)

There are some fee changes..

EUIPO will now charge a separate fee for each class. €850 for the first class, €50 for the second class, and €150 for the third and subsequent classes.

and there's the big change in Nice Class headings:

Some CTMs were filed under an 'all inclusive' Nice Heading category, which provided a catch-all protection for those Marks. A 2012 ECJ ruling 'kicked this into touch' deciding that 'if the description of goods or services in a trademark registration recited a Nice class heading, then coverage for that registration extends only to the goods or services specifically recited by the registration

In other words, if you were a bit lazy and did not include the specifics of your business in the trade descriptions, you may find these are no longer covered in your EUTM. The standard terms will be taken 'literally'. So if you have a unique and unusual service, make your changes. It's all about 'clarity and precision'.

What should I do?

Act now!, you have a 6 month transition period to make your changes and request a change of description.

Time to head on over to europa.eu, get yourself 'imported' in to the new member database ie re-register, and request a change in description.

A little bit of on line learning is available too. Check out their list of videos (especially video 4) all about the new Regulation available here.

Don't say we didn't tell you ;-)