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Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe

Steven A. Abreu

Steven A. Abreu | Partner, Trademark Chair View more articles

Steven is a member of our Trademark Practice Group and Litigation Practice Group

On March 23, 2016, the European Union’s trademark authority, known as the Office of Harmonization in the Internal Market (OHIM), changed its name to the European Union Intellectual Property Office (EUIPO). This change was just one of several made in an effort to modernize the trademark protection scheme in the EU. While we practice directly in front of the US Trademark Office, many of our clients also choose to protect their brands overseas by participating in Europe’s trademark registration process. As a result, we have been actively discussing the changes with our European associates in order to make sure that our filing and opposition strategy remains current.

Here are seven things to know about the new regulations now in effect:

  • In addition to the change of the name of the office, the name of the resulting registration, previously known as a Community Trademark (CTM), has changed to a European Union Trademark (EUTM).
  • Because of the name changes to the office and the registration, the European authorities have been warning their customers to expect a spike in the activity of scammers and unofficial publication services that may seek to take advantage of the confusion that the name change may create.
  • Previously an application could be filed in the European Union in one, two or three international trademark classes for the same filing fee, namely, 1,050 euros. The fact that three classes could be included in the application for the same price as one class led many applicants to file in three classes of goods and services even if the mark was being used in only one or two classes. This was especially true of European-based applicants. Now a base application in one class costs 900 euros and each additional class 150 euros. We believe the price changes will lead to fewer applications in three classes when only one class is truly of interest.
  • Trademark registrations in Europe are vulnerable to cancellation on the basis of non-use after a five-year grace period expires. Under the prior regulations the five-year clock began at the date of the registration. Under the new regulations it starts ticking from the earliest priority date in the application (either the filing date or the date of any priority claim).
  • Requirements for the description of goods and services in Europe are far more lax than the USPTO’s requirement of specificity and definiteness. In Europe some applicants employed a filing strategy that used class subheadings as a shorthand to designate any and all goods or services falling under that subheading. By using all the subheadings, applicants believed that they could cover the entire class. However, a recent European decision in the IP Translator case put a stop to that practice and held that subheadings covered only the goods which were logically described in the heading itself. The new regulations provide applicants who used the subheading strategy a six-month window in which to name the specific goods they wish to protect under each subheading. Since we have routinely advised against this strategy, this change should not affect our clients’ rights.
  • EUTM registrations now have more power to stop counterfeit goods in transit across Europe.
  • Suits for trademark infringement can be brought based on use by a competitor of one’s mark that runs afoul of Europe’s comparative advertising rules. These rules prohibit misleading advertising, require comparative advertising to objectively compare important features of the products or services concerned, and prohibit discrediting other companies’ trademarks.

We will continue to monitor the implications of the new rules and will bring you any further developments that will affect trademark rights in Europe. If you have any questions do not hesitate to set up a call or meeting to discuss these changes with us.

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