Member Article

Following publication of the Regulation (EU) No. 2015/2424 which is part of the reform legislative package that also replaces the existing Trade Mark Directive, the long awaited reform of the existing Community trade mark will enter into force on 23 March 2016.

The most evident change is that the Community trade mark will be renamed the European Union trade mark (EUTM), adopting the terminology of the Lisbon Treaty. Existing Community trade marks and Community trade mark applications will automatically become European Union trade marks and European Union trade mark applications upon entry into force of the Regulation.

The EU's Office for Harmonisation in the Internal Market (OHIM) will be also renamed the EU Intellectual Property Office (EUIPO) and its web page will be changed to www.euipo.europa.eu.

In addition to these name changes, the reform package includes many substantive amendments which will have an important impact on the EUTM system and related procedures. The reform package seeks to streamline procedures and to increase legal certainty. One of the immediate results will be a general reduction of the application and renewal fees for first three classes, while application fees for further classes will be in average increased.

The codification of the existing practice in the area of designation of goods and services, following the judgment of the European Court in the IP Translator case (C-307/10), also represents an important change. Based on Article 28(8) of the Regulation, holders of a EUTM are given six months to amend the lists of goods and services of those trade marks that were filed prior the IP Translator case (i.e. 22 June 2012) with only general headings under the Nice Classification. They will be required to clarify and specify the designations as to their original intention when they filed the applications. The last day for filing such declarations is 24 September 2016.