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The new European trademark Regulation

The most thorough revision of European legislation on trademarks in the last 20 years 21 January 2016

On 24 December 2015, the EU Regulation was published that represents the most thorough revision of European legislation on trademarks in the last 20 years, and will come into effect on 23 March 2016.

The Community Trademark will become the European Union Trademark and, in order to reflect in the best possible way the activities carried out by the Office for Harmonization in the Internal Market, this will now be called the European Union Intellectual Property Office.

The two most important changes introduced by the new Regulation are:

1. Modification of the claim for goods and services

All EU trademarks filed which claim the whole heading of specific classes, even if followed by the specification of some goods and/or services, will see their protection reduced, and limited to the literal meaning alone.

Before the new Regulation comes into force on 23 March 2016, Proprietors of such trademarks will be able to proceed with a voluntary limitation of the goods and services listed in the classes claimed or, after this date, and using the 6-month period of grace allowed by the Regulation, they will be able to specify the goods and/or services that they intended to protect, provided that the latter appear in the alphabetic list of the class in the Nice classification, in the edition in force on the filing date.

If, on the contrary, no declaration is presented by the Proprietor by the final date of 24 September 2016, the EU trademarks with be considered as protecting only the goods and/or services – obviously – that are covered by the literal meaning of the indications that appear in the heading of the relevant class.

We must also make clear that art. 28 of the new Regulation limits the possibility given to Proprietors of EU trademarks to prevent third parties from continuing to use a trademark in relation to goods and/or services if and to the extent that the use of the trademark:

  • commenced before the register was amended due to the filing of the declaration;
  • did not infringe the proprietor’s rights based on the literal meaning of the record of the goods and services in the register at that time.

Similar considerations apply if the proprietor of an EU trademark who has amended the list of goods or services were to decide to file a request to cancel a subsequent trademark.
The proprietor of Community trademarks filed and claiming the general headings of the classes will therefore have the possibility of choosing between three options:

  1. to take no action whatsoever, adopting a passive attitude, and potentially risking a big limitation of the goods and/or services covered by the registrations;
  2. to file a declaration by the deadline of 24.09.2016, voluntarily limiting the scope of protection of his EU trademarks and running the risk of limiting the possibility of using his rights in action against third parties;
  3. to file a request to limit the goods and/or services claimed before 23.03.2016, so as to obtain a broad protection without running the risk of limiting the possibility of using his prior rights in action against third parties.
Our suggestion is certainly to consider the third and last option, taking action before 23.03.2016 where necessary, and to file a request to limit the goods and/or services claimed so as to extend the protection of your EU trademarks.

2. Change to the registration and renewal fees

The second important change introduced by Regulation 2015/2424 concerns the registration fees for new trademarks and renewal fees. In particular, the structure of “3 classes at a single price”, currently in force for on-line filings at a cost of €900 and for paper filings at a cost of €1,050, will be replaced as follows:

Filing fees (e-filing)
Community Trademark (old system) Fees EU Trademark (new system) Fees

First class

€900
Claim up to 3 classes

First class

€850

Second class

Second class

€50

Third class

Third class

€150

From the fourth class and for every extra class

€150

From the fourth class and for every extra class

€150

On the contrary, as far as renewal fees are concerned, these have been considerably reduced and put on the same level as filing fees, as below:

Renewal fees (e-filing)
Community Trademark (old system) Fees EU Trademark (new system) Fees

First Class

€1,350
Claim up to 3 classes

First Class

€850

Second Class

Second Class

€50

Third Class

Third Class

€150

From the fourth class and for every extra class

€400

From the fourth class and for every extra class

€150

Therefore, in the light of the above, if it is your intention to file applications for multi-class trademark registrations, it would be more advantageous economically to file them before the new Regulation comes into force, i.e., before 23.03.2016.

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