On 15 January 2016, Europe’s new Trade Mark Directive (2015/2436) will come into force, with the aim of harmonising trade mark laws across the EU. The news follows the publication of the new Directive in the Official Journal 23 December 2015. The new Directive replaces the previous Directive (2008/95/EC), with effect from January 2019. Member States will have three years to enact the relevant legislation.
The new rules aim to make registration of trade marks cheaper, quicker and more reliable, through streamlining and harmonising national and EU trade mark registration procedures. They also make it possible to impound the transit of counterfeit goods through EU territory.
Proposals for reform were first put forward by the European Commission 27 March 2013, and last year we reported on the progress that had been made in informal trialogue discussions between the European Parliament, Commission and Council. Since then both the Council and Parliament have formally adopted the Directive, with the Parliament stating that the new rules “will allow better protection for rights holders”.
Changes we can expect to see under the new Directive include:
- Implementation of the ‘one class, one fee’ principle, meaning that an EU trade mark can be registered in just one class at a reduced fee.
- Clarification of basic trade mark terminology through renaming the Office for Harmonisation in the Internal Market (OHIM) to the EU Intellectual Property Office, and renaming the Community Trademark to EU trademark (EUTM).
- Removal of the requirement for graphic representation in the registration process.
- Reduction in renewal fees.
Reform of the Community Trade Marks Regulation (207/2009/EC) was also put forward in 2013, and the new Regulation has already received the approval of the Parliament and Council. The Regulation governs EU-wide trade marks, and will come into force 90 days after its publication in the Official Journal. Changes are likely to be seen from early 2016.
The new Directive and Regulation will govern trade marks across the EU, and businesses should therefore review their existing trade mark portfolio and consider the best way to protect and enhance the portfolio through new applications or renewals of registration.