Community Trade Mark Regulation in force - A brief introduction

The European Community Trade Mark Regulation No. 207/2009, which was in force until 23 March 2016, has been replaced by the new EU Regulation No. 2015/2424, which has been in force since then.

As a result, numerous changes have come into force concerning the name, organisation and functioning of the European Union Intellectual Property Office (EUIPO). Some things have also changed for trade mark applicants themselves, such as the scale of fees or the commissioning of the establishment of a mediation centre for faster and easier dispute resolution in trade mark disputes.

The former Office for Harmonisation in the Internal Market (OHIM) has been renamed the European Union Intellectual Property Office (EUIPO).

The European Commission finds the functioning of the trade mark system so far generally successful and also that it has stood the test of time. However, it also sees a need for modernisation by making it "more effective, more efficient and more coherent overall". This is especially true in view of the inexorable development of the internet. Experience in the application of the trade mark system in force until 23.03.2016 had shown that there was a need for improvement in the various areas of procedures. Therefore, a simplification and also an acceleration of the procedures in the affected areas shall counteract this, whereby neither legal certainty nor predictability shall suffer from the changes, but shall even be expanded. Parallel to the changes in Community trade mark law, the possibilities of national trade mark applications are to be further harmonised, i.e. a more far-reaching adaptation between the individual countries of the European Union is to take place.

The previous trade mark terms are replaced by new terms. The following changes are worth mentioning here:

- Community trade mark' shall be replaced by 'EU trade mark

- "Community collective mark" shall be replaced by "Union collective mark

- "Community Trade Mark Court" is replaced by "Union Trade Mark Court".

- Community', 'European Community', 'European Communities' shall be replaced by 'Union

- "President of the Office" is replaced by "Executive Director".

Previously, it was also possible to apply for Community trade marks via the central trade mark offices of an EU member state. This is now only possible via the European Union Intellectual Property Office (EUIPO).

The requirements for the graphic representability of an EU trade mark have been deleted from the definition. This is to show greater flexibility and legal certainty as to the means of representation of the EU trade mark. EU trade marks can be signs of any kind (words, colours, letters, numbers, shape, etc.) as long as these signs distinguish the goods and services of the trade mark applicant from those of other undertakings. Furthermore, the subject-matter of the protection granted to the trade mark applicant must be clearly and unambiguously identifiable by the signs applied for.

The rights conferred by the EU trade mark have been extended. It is now explicitly stated that the EU trade mark proprietor is entitled to prohibit the use of the registered sign by third parties if the sign is used as a trade name or company name or as part thereof. Previously, it was also possible to prohibit the use of the sign in advertising, but this has been extended with the new regulation to prohibit use in a manner contrary to Directive 2006/114/EC (Directive on misleading and comparative advertising). Furthermore, rights were introduced for the trade mark proprietor to prohibit preparatory acts in connection with the use of the packaging or other means of identification by third parties. These rights under the EU trade mark can only be asserted after the trade mark has been published. Compensation can also only be claimed if the act warned against was exercised after publication.

New articles have been created in the Regulation which regulate the procedures for registration, amendment or cancellation of various licences (exclusive licence, sub-licence, part-licence, temporary licence) and other rights (Articles 22a and 24a of the Regulation).

The innovations also affect the fees to be paid.

Para. 2 of Art. 26 of the previous Regulation provided that an application fee and any additional class fees were to be paid. This used to include the application fee, which included three classes and only for each additional class a further class fee was due. Now the application fee includes only one class and for each additional class, i.e. from the second class to be registered, a class fee is already due. Previously, a registration fee of €900.00 was due for three classes (€1,050.00 for paper registration). Only from the fourth class to be registered onwards, an additional class fee of € 150.00 per class to be registered was due.

According to the new regulation, a registration fee of 850.00 € is now due, whereby this registration fee is limited to only one class. The registration of a second class costs an additional € 50.00 and from the third class onwards, the registration fee increases by a further € 150.00 for each additional class.

The change of the fees to the "one-class system" can be explained by the fact that many trade mark applicants often registered their trade marks in classes of goods and services that were useless for themselves, as they wanted to exhaust the three classes included in the application fees. In order to now only show the actual goods and services relating to the respective trade mark, the change of the fee system was introduced in the new regulation.

The individual classifications and designations of the goods and services for which trade marks can be applied for have also been fundamentally expanded (Article 28 of the Regulation).

The goods and services must now be indicated so clearly and unambiguously that one can recognise the scope of protection of the registered trade mark solely on the basis of these indicated goods and services. Unclear or ambiguous terms will be rejected and a time limit set for rectification. Generic terms or other general terms from the class headings can only be used if they meet the requirements of clarity and unambiguousness, i.e. they also only include the goods and services that one can clearly associate with the generic terms or general terms on the basis of the literal meaning of the terms.

Important for trade mark owners whose trade mark was applied for before 22.06.2012:

Trade mark proprietors who have registered their trade mark in respect of an entire heading of a Nice Classification may declare that, when filing the trade mark application, it was their intention to seek protection for the trade mark in respect of goods and services beyond those covered by the literal meaning of the heading of the Nice Class, provided that the goods and services were included in the classification of the Nice Class as in force on the filing date and that they are not covered by the literal meaning of the heading or generic term. This declaration must be received by the European Union Intellectual Property Office no later than 24.09.2016. If this declaration is not received by the EUIPO within the aforementioned time limit, the IP rights shall only apply to the goods and services which are clearly covered by the literal meaning of the class heading.

We therefore recommend trade mark owners to check their registered trade mark, if it was applied for before 22 June 2012, with regard to whether amendments or additions to the goods and services must be applied for at the EUIPO.

If there are any queries or doubts in this regard, please do not hesitate to contact us.

A new brand form was also "created".

The new regulation describes the so-called "EU trade mark". This so-called Union trademark can be registered as of 01.10.2017. It is intended for goods or services for which the trade mark proprietor can guarantee the quality, accuracy or other characteristics of the material, the manner in which the goods are manufactured or the services are provided (exception: geographical origin) in such a way that it is possible to distinguish his trade mark from others for which no such guarantee exists. The characteristics and manner must be set out in a statute to be submitted to EUIPO for examination. Unless otherwise provided, the rules governing EU trade marks shall apply congruently to EU certification marks.

In the context of the above changes introduced by the new Regulation, the European Union Intellectual Property Office warns against misleading invoices sent to trade mark owners by a wide variety of companies. Before paying an invoice, careful checks should be made as to which services are being paid for and which company the invoice is from. EUIPO has published a list of rogue companies (each with an invoice as an example) that send misleading invoices. If you have any doubts or questions about invoices you have received, please do not hesitate to contact us.

The same applies if you have questions regarding the changes in Community trade mark law. In this case, too, we are at your disposal. Please arrange an appointment with our Wuppertal office with Michael Ullrich, LL.M. (Information Law), specialist lawyer for information technology law.


Goldberg Attorneys at Law 2016

Communicated by Timo Möllers