EU trade mark reforms

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On 23rd March 2016 the European Union trade mark system changed. What are the implications for the profession? For trade mark holders? For business?

We have pooled together content that will hopefully address some of these questions and inform our members, the wider legal profession and the public of the changes and what they mean. 

23rd March is not the end of the developments as many of the reforms will continue to be implemented over the course of the next couple of years – we will be updating you with new content and resources as the changes to the directive progress. 

Click here to read the new directive in full (Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015).

What you need to know (the basics)

Name

The Office for Harmonization in the Internal Market (OHIM) is now the European Union Intellectual Property Office (EUIPO)

The Community Trade Mark (CTM) is now the European Union Trade Mark (EUTM). All exisiting CTMs have autmatically been converted to EUTMs.

Fees

It now costs €850 for an application or renewal in one class, €900 for two classes and an extra €150 for each additional class. This represents a big saving, particularly on renewals. 

Non-graphical representations

Although these changes are yet to be fully implemented the new directive does away with the requirement for a trade mark to be filed graphically - this should make it easier to regsiter more unusual marks such as sound and smell. 

Podcasts

EU Trade Mark reform: 'The devil is in the detail' (41 mins)
Philip Harris discusses the finer points of the EU trade mark reform package, recorded at ITMA's Autumn Seminar in September 2015. Click here for Philip's accompanying slides

EU trade mark & copyright reforms (45 mins)
Robert Cumming and Chris Hoole share their insight on EU trade mark and copyright reforms, recorded on 1 March 2016 at ITMA seminar in Leeds.

EU Trade Mark Directive (30 mins)
Hogarth Chambers' Charlotte Scott goes through the new EU trade mark directive at the ITMA Spring Conference 2016.

Articles

Trade mark transformation, Patricia Collis (ITMA Review)
Patricia Collis's article from October/ November 2015's ITMA Review on trade mark reform

Lawyer Monthly Magazine interview with Abida Chaudri
ITMA member Abida Chaudri answers questions on the reforms

EU trade mark reforms (Solicitors Journal - subscription required)
ITMA President Chris McLeod pens article for Solicitors Journal on the reforms

Fighting counterfeits: goods in transit in the EU, article by Chris McLeod (WIPR - subscription required)
ITMA President Chris McLeod writes about how the reforms will help stop couterfeit goods passing through the EU

10 things to know about the EU trade mark reforms
ITMA Council member Clare Jackman shares the top ten points on the reforms

Videos

OHIM video outlining the name change

In a series of videos released by OHIM, Dimitris Botis, Deputy Director ICLAD at OHIM, discusses the new directive. 

The background to the new regulation

Formalities

Absolute grounds for refusal

Goods and services 

Relative grounds for refusal

Appeals

Fees

Changes requiring secondary legislation

Governance and other changes (including terminology)

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