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Amendments to EU and Benelux trademark law

EU trademark law has recently been substantially modernised. More efficient and consistent law is not only better suited to the present internet age, but also contributes to a more coherent body of procedures within Europe. The following amendments to trademark law are of interest to the trademark owner:

1. First and foremost, the name. The names ‘Community Trade Mark’ or ‘CTM’ are being replaced by ‘European Union Trademark’. The name of the organisation is also being changed: ‘OHIM’ or the ‘Office for Harmonisation in the Internal Market’ is being replaced by the ‘European Union Intellectual Property Office’.

2. The fees payable for a trademark application and renewal are calculated per class and are the same for applications and renewals. For a trademark application in one class, this will mean a small reduction; the new fee for a renewal in one class is reduced considerably.

3. Three years ago the requirements for the goods description had already been tightened up following the ‘IP Translator ruling’. This case law is now being implemented in the law. Owners of an EU trademark preceding 22 June 2012 (the date of the ruling) can make a statement that their application did indeed cover all products in that class for which the application was made. Under current legislation, on the other hand, protection is only for ‘what exists’.

4. In an opposition, the applicant can ask the opponent to provide proof of use if the trademark being relied on by the opponent is more than five years old. This date has always been calculated as the five years prior to the publication of the application. This is being changed to the five years prior to the date of the application.

5. Trademark protection in the EU can be obtained not only through a direct EU trademark application, but also through a designation of the EU in an International Registration (IR). The disadvantage of this latter option was that the procedure took considerably longer because publication was much later. This is being changed: from now on there will no longer be much time difference between the procedure for an EU trademark and a designation of the EU in an IR.

6. It will become much easier to take action against counterfeit goods because the burden of proof will be shifted on to the infringing party.

7. Cancellation action due to the non-use of a trademark or a revocation action (such as on the grounds of bad faith or older rights) can now only be submitted to the court. The forthcoming legislation provides that the national offices (including, for example, the Benelux Office for Intellectual Property) must set up their own procedures for this, which can be expected to proceed faster and more cheaply.

We will keep you up to date on further developments and the date of commencement of these topics, and will be pleased to advise you further on what this may mean for your trademarks.

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