“To improve is to change; to be perfect is to change often.” – Winston Churchill

Practitioners across the globe have become familiar with the Community trade mark (‘CTM’) system, since its inception in 1996. It’s a new year and 2016 promises change and growth in the European Community (‘EU’), which will impact brand owners worldwide. It is important to keep abreast of these developments which may financially and legally influence existing and prospective brands.  

A CTM is a single trade mark application covering 28 member countries of the EU, namely; Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Croatia, Germany, Denmark, Estonia, Spain, Finland, France, UK, Greece, Hungary, Ireland, Italy, Lithuania, Luxembourg, Latvia, Malta, Netherlands, Poland, Portugal, Romania, Sweden, Slovenia and Slovakia. These member countries have agreed to a number of changes to the CTM regulations, which are said to take effect during the course of the year.

The aim of this reform is to modify this system to ensure that is promotes a more cost effective, efficient and accessible system, and to create a better co-existence and synergy, between international and national trade mark offices.

Many of the changes come into effect on 23 March 2016 and it is therefore paramount that business owners become familiar with the changes, to ensure proper management of their brand portfolios. Both existing trade marks and desired future trade marks will be affected by these changes.

We have provided an overview of some of the main changes to be implemented and will offer subsequent reports as these developments come to pass. This list is not exhaustive of the new Regulations.

• The CTM will be renamed and will become the European Union Trade Mark (‘EUTM’).
• The Office for Harmonisation in the International Market (‘OHIM’) will be renamed and become the European Union Intellectual Property Office (‘EUIPO’).

New fee structure which takes effect of 23 March 2016

Under the current CTM system, an applicant can pay a base official fee for one trade mark which covers up to three classes. The newly introduced fee structure will do away with this system on 23 March 2016.

This base fee will be lowered, but will only cover one class. This is intended to avoid applicant’s filing for goods and services which are not necessarily of importance to their brand.

In addition, there will be a set official fee for a trade mark filed in two classes and each additional class, subsequent to the second class, will be charged separately.

A similar fee structure will be implemented for renewals.

Specifications of goods/services – class headings

There have been numerous discussions following the contentious IP Translator case, regarding the meaning and interpretation of the Nice class headings. The argument was based on the interpretation of these class headings and whether they should be interpreted in a literal sense (the actual goods/services mentioned), or whether they should be interpreted to mean all goods and services covered by that class.

The new Regulations seem to discard the latter and reiterate that specifications of goods or services must be adequately clear and precise. Class headings should be interpreted to include only those goods and services clearly covered by their literal meaning. This is to avoid excessively broad protection in respect of goods or services, which are not necessarily essential to the brand owner and to avoid superfluous oppositions.  

Owners of CTMs filed before 22 June 2012 (before the decision of the IP Translator case), which list Nice class headings, can file a declaration specifying which specific goods or services are to be covered by their registration. This is to ensure that goods or services which are not literally included within that class heading, are covered. The specifications can be extended beyond the strict literal meaning of the class heading, provided these goods or services fall within the alphabetical list of that class.

This new Regulation comes into force on 23 March 2016 and owners are provided a six month grace period in which to adhere to this, namely by no later than 24 September 2016.

Should an owner not decide to amend the specification in accordance with these Regulations, then such goods and services will be interpreted in a somewhat constricted manner, only taking into consideration the literal meaning of such goods and services. 

Trade marks filed after 23 March 2016, will naturally be required to comply with these Regulations.

The Definition of a trade mark to include non-traditional trade marks

The definition of a trade mark will be broadened to include marks which are not capable of being represented graphically. This includes, for example, sounds, colours and smells.

Certification marks will also be included within the definition of what constitutes a trade mark.

Prior existing trade marks

Searches will no longer be conducted by EUIPO during the examination process, unless requested at an additional cost. It is paramount that clients conduct their own searches to ascertain existing trade marks.

Many other Regulations have been implemented affecting inter alia; counterfeit goods, comparative advertising and proof of use in infringement proceedings.

KISCH IP endeavours to be at your disposal for these discussions and management of your CTM portfolios.

Natalia Androliakos

Attorney
Trade Mark Department
Email nataliaa@kisch-ip.com
Tel +27 11 324 3113