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Important changes to European Trademark Legislation

A number of important changes will be made to European trademark legislation with effect from 23 March 2016; these changes could affect your EU trademarks.

The changes in question are being introduced in relation to the large-scale modernisation of European trademark law and pertain to the EU Trademark Regulation (legislation on the EU trademark) on the one hand and the Trademarks Directive (binding guidelines for legislation in the EU member states) on the other hand. The new legislation was published at the end of December 2015 and the first provisions will enter into force with effect from 23 March 2016. Changes relating to the Directive and, as such, legislation on national or Benelux trademarks, will only enter into force some time in the future.

The most important changes, which are explained in more detail below, are:
– changes to fees and the abolition of the single fixed fee for three product classes;
– additional declaration necessary to keep the product and service list for the EU trademark up-to-date; and
– cancellation and invalidity actions will no longer be brought before a court, but before the national trademark office.

Changes to fees and the abolition of the single fixed fee for three product classes
The fees due for EU trademark applications and EU trademark renewals will be changed and will be calculated per class from now on. The current system is still based on three classes for the price of one. As of 23 March, the official basic fees will be reduced, but must then be paid per class: € 850 for the first class, € 50 for the second and € 150 for the third and subsequent classes.

The ‘fee per class’ system will be introduced for EU designations in an International Registration (IR) and the fee reductions will be similar.

Where it used to be tempting for trademark owners to add a second or even third class under the old system, they will now be more likely to file an application (or renewal) just for the specific class (or classes) necessary. Renewal fees will fall significantly more: by € 500 for just one class.

Although the national trademark offices are not required to introduce a ’fee per class’ system, the expectation is that payment per class for a Benelux trademark application and renewal will be the case in two to three years time too.

The rationale behind the new system is that the trademark registers are ‘becoming polluted by trademark applications that are not limited to the class for which they will actually be used, but also extend to ‘surrounding‘ or ’defensive’ classes. By charging an additional amount in this situation, the expectation is that applications and renewals are more likely to be limited to the products actually needed – and traded in practice – resulting in a clean-up of the register in time. Added to the above, the lower renewal fees will certainly yield a clear saving for trademark owners in the long term. These price changes will, of course, be reflected in the fees that V.O. charges.

Additional declaration necessary to keep the product and service list for EU trademarks up-to-date
Requirements applicable to the product description were already fine-tuned three years ago, further to the ’IP Translator judgment’. The list of goods must be produced in a manner that is ‘sufficiently clear and precise’ and the risk ensuing from an unclear description has been placed with the trademark owner. This case law is now being laid down in legislation. The owners of EU trademarks with application dates before 22 June 2012 – the date of the judgment referred to above – will be given the opportunity, before 24 September 2016, to submit a declaration in which they indicate that their applications, in which the so-called ’class heading‘ was included, covered all of the products in the class for which the applications were made, rather than the current view: ’protection limited to what has been clearly stated’.

Since the IP Translator judgment, the application date has been decisive for the determination of the extent of protection provided by the class description. However, applications made before the date of this judgment could fall under a broader protection regime. The above has resulted in an unclear situation for trademark owners in particular. The legislator wanted to put an end to this situation by introducing a ’it-means-what-it-says‘ system for all EU trademark registrations, regardless of their application date. With this in mind, the submission of a declaration offers a group of trademark owners the opportunity (the last one) to correct anything that is unclear in their class description.

Since the class description is decisive when establishing the extent of protection that a trademark enjoys – in the event of genuine use or opposition, for example – the trademark owner will need to carefully examine its trademarks to avoid any loss of rights.

V.O. will update its clients on this matter separately in March.

Introduction of cancellation and invalidity actions at a national level
The new Trademarks Directive requires EU member states to introduce a cancellation action in relation to the non-use of a trademark or an invalidity action in a situation where an older right exists, both to be brought before the national trademark office. At the current time, it is only possible to bring proceedings of this nature before a court in the Netherlands and Belgium. The Benelux Office for Intellectual Property (BOIP) expects to be in a position to introduce this measure in the next three years.

The expectation is that it will be possible to settle proceedings brought before the Office faster and more cheaply than was previously possible before a court. Negotiations are currently under way about the practical implementation of these proceedings.

Other changes
In addition to the points discussed above, the publication date of EU designation in an International Registration (IR) will be brought forward. Trademark protection in the EU can be obtained via a direct EU trademark application, but also by means of an EU designation in an IR. The disadvantage of the last option is that the procedure is significantly longer. This is because publication started much later in comparison with a direct EU trademark application, because of which it takes longer to achieve clarity or for an opposition to be filed. This will be changed and an EU designation in an IR will be published at an earlier stage.

It will also become easier to take action against fake goods in transit, with the burden of proof being placed on the infringer: from now on, the latter will be expected to prove that the products will not be marketed in the transit country.

Finally, the term ‘Community trademark’ will be replaced with ‘Union trademark’ under the updated trademark legislation. Added to the above, the EU agency, which is currently known by the name ‘Office for Harmonization in the Internal Market’, will now become the ‘European Union Intellectual Property Office’.

Would you like more information?
The changes outlined above could have important implications for how your trademarks are managed. If you would like more information about the above, please contact Michiel Haegens, Head of the Trademarks & Designs Department at V.O. As the Chair of the Benelux Association of Trademark and Design Law, Michiel has been involved in decision-making on the changes to trademark legislation right from the very beginning. He will be happy to assist you. Tel. +31 70 416 68 65, e-mail m.haegens@vo.eu.


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