The trademark reform package, aiming at clarification and harmonisation of EU trademark regimes, took a big step forward in June 2015. The European Commission, Council and Parliament reached a mutual understanding concerning the amendments to be made to the Trademark Directive and Regulation.
The reform package has two main goals. First, to make it easier for companies to operate in the EU internal market by making the trademark regimes clearer, more compatible and more cost effective. Second, the long term goal of the reform is to boost innovations, growth and competitiveness in the EU.
The trademark package, two years in the making and intended to meet the needs of the market, will lead to some extra work for European trademark holders during the interim period provided for in the new legislative package. These actions need to be undertaken as soon as possible, during Spring 2016 at the latest. However, generally speaking the reform is a positive change that promises to save costs.
European trademarks need to be updated soon
The trademark reform includes provisions on harmonising the classification practices for Community trademarks (trademarks valid throughout the EU), which shall henceforth be known as European trademarks. Classification practices shall be revised to conform with the principles set forth in “IP translator” (C-307/10), a landmark decision by the Court of Justice of the European Union. In the future, a trademark filed using class headings will only cover goods included in the wording of the class headings in question. Under previous office practice in Finland for example, a trademark filed using class headings would have covered all goods in all categories considered to fall under that heading.
Given the above, it is very important for companies to review the classification of their European trademarks. Even though the changes may appear to be solely a question of technicalities, they may have a big impact on the scope of protection of a trademark.
In particular, trademark holders should:
-Take into account the revised practice when filing new applications
-For Community trademarks filed before 22 June 2012, the list of goods should be reviewed, and specified if necessary. In order to ensure that there is no problem with the continued coverage of trademarks, it is important to undertake review of classification as soon as possible. It is expected that the deadline for the changes will be spring 2016 (precise schedule to be confirmed in fall 2015). In the event a trademark’s list of goods is not reviewed, a trademark filed using class headings will after the deadline only extend to the goods covered by the wording of the class headings.
Even though there is still time to update the classification of European trademarks until spring 2016, it is better to undertake review earlier than later.
Applications for European trademarks to be submitted to new European Union Intellectual Property Office in the future
The name of the organisation administering Community/European trademarks will also change. Applications for European trademarks will, after the revision, be submitted directly to the European Union Intellectual Property Office, which was before the revision known as the Office for Harmonisation in the Internal Market (OHIM).
Any of our EU trademark- and design attorneys will be pleased to provide more information on the revision. Contact: EU trademark and design attorney Paula Sailas, paula.sailas@berggren.fi, and EU trademark and design attorney Milla Lehtoranta, milla.lehtoranta@berggren.fi
