New European Union trademark Regulation

The European Parliament and the EU Council have approved the EU Regulation 2015/2424 that will replace the EC Regulation 207/2009 regarding Community trademarks.

From March 23rd, 2016, changes regarding Community trademarks will enter into force, in order to simplify the registration procedures and to increase the legal certainty. The EU regulation is self-executing, i.e. it does not require official recognition in each country, because it is mandatory and directly applicable in the Member States.

Below the most important changes:

– the name Community trademark will become European Union trademark (EU trademark), each reference to the European Community must be replaced with European Union;

-the Office for Harmonization in the Internal Market (OHIM) will be renamed European Union Intellectual Property Office (EUIPO);

– changes of the costs of official fees for the filing and the renewal of trademarks will be applied.

It will no longer exist a forfeit for the filing of a trademark registration including 3 classes. The new fees, in fact, include a fee for each additional class over the first.

The purpose is not only to relieve the costs for Applicants who wish to file a trademark registration claiming one single class, but also to reduce the number of applications with more than one class because of cost-effectiveness.

Also the fee for renewals will change.

The table below summarizes the above mentioned changes:

		MC (Old System)	EUTM (New System)
Filing fees		900 (3 classes)	850 (1 class)
Fee	2° class	—	50
	3° class	—	150
	From the 4° class	150	150
Renewal fees		1350 (3 classes)	850 (1 class)
Fee	2° class	—	50
	3° class	—	150
	From the 4° class	400	150

– a strong legal equipment will be introduced in order to improve the cooperation between national offices and the EUIPO – former OHIM – (implementation of common procedures and rules, common databases, sharing of data and exchange of expertise)

– providing more details will became mandatory in the list of the claimed classes. An Applicant who filed a trademark between 1970 and 2012 claiming one entire product class or who reported the name of the entire class, will be requested to regularize or even better to specify this classification according to its activity held by March 2016

– the Procedure for submission and examination of Oppositions and Appeals have not been changed in substance, however, some changes have been introduced. Even owners of Designation of Origin or Geographical Indication will have the possibility to oppose the registration of a EU trademark. The 3 months deadline for the submission of an Opposition against an international registration designating the EU will now start one month after the publication of the trademark. The Appeals must be filed with the Tribunal and no more with the Court of Justice (the conditions remain unchanged).

Other changes, listed below, will enter into force after 21 months from the publication of the Regulation (December 2015), since they require to be implemented by the national law:

– for the registration of trademarks the detail of the graphic representation required by the art. 4 RMC will be deleted. As a consequence, from September 2017, all brands can be represented in any shape, provided that the representation is clear, precise, independent, easily accessible, intelligible, durable and objective;

– Certification Trademarks of the European Union will be introduced and they will enable “an institution or a certification body to allow participants of the certification system to use the company trademark as a sign for goods or services that meet the certification requirements” (Article 74b RMUE);

The Community trademark already filed will automatically be converted into EU trademarks by the European Union Intellectual Property Office (EUIPO).

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