Trademarks are often among the most important and valuable assets of a business. A distinctive trademark allows a business to create goodwill, acquire a reputation, and to guarantee that the goods or services bearing the same trademark have the same quality. A Community trademark (CTM) protects your exclusive rights in all the 28 Member States of the EU and has the benefit for its proprietor to obtain a Europe-wide injunction to prevent further or threatened infringement.

1. March 2016
INFO – FLASH
BRAND OWNERS BEWARE: THE NEW EU TRADEMARK REFORM IS HERE!
Trademarks are often among the most important and valuable assets of a business. A
distinctive trademark allows a business to create goodwill, acquire a reputation, and to
guarantee that the goods or services bearing the same trademark have the same quality. A
Community trademark (CTM) protects your exclusive rights in all the 28 Member States of
the EU and has the benefit for its proprietor to obtain a Europe-wide injunction to prevent
further or threatened infringement.
Trademark law in Europe comprises both European Union (EU) legislation as well as the
national laws of the 28 Member States. The EU institutions recently adopted a very
substantial reform package for EU trademarks. The reform package consists of two
documents: a new Trademark Directive (Directive (EU) 2015/2436) aiming at the national
trademark laws’ harmonization and a new Trademark Regulation (Regulation (EU)
2015/2424; “EUTMR”) offering Community-wide protection by way of the CTM.
The most significant changes will include the following:
a) New terminology: From March 23, 2016, the Office for Harmonization in the Internal
Market (OHIM) will be called the “European Union Intellectual Property Office”
(“EUIPO”) and the CTM will be called the “European Union Trademark” (“EUTM”).
b) New fees: The amending Regulation will also revise the fees and will apply a “one-fee-
per-class” structure. Each class will now carry a separate fee: 850 EUR for an application
in one class, 900 EUR for two classes, and 1050 EUR for three classes. The exact same
fees apply for renewing registrations. Furthermore, the fees for opposition, cancellation
proceedings, and appeals are will be reduced.
c) Absolute grounds for refusal: The reform system will prohibit the registration of signs
which consist exclusively of the shape or another characteristic which results from the
nature of the goods or is necessary to achieve a technical result. New grounds have also
been added: designations of origin, geographical indications, traditional terms for wine,
designated specialties, and plant varieties. The reform also eliminates the possibility for
users to add disclaimers in EUTM applications in order to overcome future absolute
grounds objections.
d) Open door to non-traditional trademarks: These categories of marks (taste, sound,
shapes, color per se and motions) are more difficult to register than traditional marks
encountering the problem of satisfying the requirement of graphical representation. In
2017, the EUTM applications will no longer need to represent marks graphically,
provided that these marks can be presented in a form that allows a clear determination
of its scope of protection.

2. March 2016
e) Certification trademarks: Currently at the EU level we only have Community collective
marks in addition to the ordinary CTM. The new regulation will introduce a new category
of trademark: the EU certification mark. A certification mark is designed for use by
authorized entities to certify that a good or a service complies with certain standards
related to its origin, the material used, the manufacturing process or the quality.
f) Goods in transit: The new rules will allow trademark owners to prevent third parties
from bringing counterfeit goods infringing their trademark rights from third countries
into the EU, even if the goods were not released for free circulation on the EU market.
The burden of proof will be shifted towards the alleged infringer. He has to proove that
the owner of the trademark has no right to prohibit the sale of the goods in the country
of final destination. By including this new provision, the judgement of the Court of
Justice of the EU in the Nokia/Philips cases has been effectively overturned.
g) Clarify your specification of good or services: Brand owners of CTMs filed before June
22, 2012, and covering the entire heading of a Nice class, may file an Article 28
declaration stating that your intention, on the date of filing, had been to seek protection
for goods or services not covered by the literal meaning of the class heading. If no
declaration is filed, the CTM will be deemed to only cover the goods or services covered
by the literal meaning of the class heading. A period of six months to review your
trademark portfolios and consider if any amendments should be made will begin from
March 23, 2016 (see also OHIM FAQ).
The reform package aims to create a more efficient and predictable system for brand owners
throughout the EU. It includes some important changes that will modernize EU trademark
law in the digital age. The amending Regulation was published on December 24, 2015 and is
part of the EU trademark reform legislative package that also includes the replacement of
the existing EU trademark Directive. The EUTMR will enter into force on March 23, 2016 and
be directly applicable, while Member States will have until January 14, 2019 to transpose the
provisions of the new Directive.
If you would like additional information, please contact your usual KOAN LORENZ contact or
any of the professional(s) listed below:
Thomas DUBUISSON
Associate
tdu@koanlorenz.com
Agnès MAQUA
Partner
am@koanlorenz.com
Nicolas HAMBLENNE
Associate
nha@koanlorenz.com