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October 15, 2015 Vol. 70 No. 18 Back to Bulletin Main Page

The EU Trademark Reform: What Will it Change for Trademark Owners and Practitioners?

On October 1, 2015, 233 participants (among them INTA members, non-members and government officials around the globe) attended an INTA webinar to learn more about the impact of the upcoming EU trademark reform on the registration, use and enforcement of both Community trade marks (CTMs) and national trademarks in EU Member States.

The webinar featured speakers who were well suited to explain the changes that the reform will bring for trademark users, including Tomas Eichenberg, Policy Officer-Legal Adviser at the European Commission, who was in charge of drafting the original proposed texts; Stephen Rowan, Director, Trade Marks and Designs Division at the UK Intellectual Property Office (UKIPO), who was closely involved in the legislative process; and Dimitris Botis, Deputy Director for Legal Affairs, Office for Harmonization in the Internal Market (OHIM). The webinar was moderated by Michael Hawkins (Noerr Alicante IP, S.L., Spain), Chair of INTA’s Legislation and Regulation Committee, Europe and Central Asia Subcommittee.

The speakers began the webinar by explaining when, how and what the reform will change for trademark owners and practitioners. Mr. Eichenberg listed the most important developments that trademark users need to anticipate. New jargon is also foreseen: one will no longer refer to “OHIM” but to the “EUIPO” (the European Union Intellectual Property Office) and no longer to “Community trade marks” or “CTM” but to “European Union trademarks” or “EUTM.” Mr. Eichenberg clarified where to find the new rules: most of them will be in the new CTM Regulation, which is expected to enter into force in late March 2016, and in the new Trade Marks Directive, which will be implemented by most EU Member States within three years. However, some rules will be inserted in an additional implementing regulation to be adopted at a later stage.

Mr. Botis detailed some of the novelties that trademark users will face when interacting with OHIM in the future, especially regarding the registration and opposition processes. OHIM has estimated that 500 tasks are necessary to implement the reform, and will issue some new guidelines in March 2016 after consulting with trademark users.

Mr. Rowan spoke on the modifications that UKIPO will have to introduce following the reform, especially in terms of the application procedure with new fees and new requirements. He also explained how and when the UK will proceed to change its trademark legislation so that trademark users can better anticipate some necessary actions related to their rights.

Afterwards, attendees received practical tips from speakers regarding several major anticipated changes, such as classification of goods and services, counterfeit goods in transit, administrative procedures for oppositions, revocations and invalidity and absolute and relative grounds.

The webinar concluded with a lively Q&A session. Attendees were able to have their questions answered live by the speakers or via e-mail afterwards.

To learn what to expect and how to prepare for the implementation of the EU trademark reform, you can purchase the archived version of the webinar.

Find out more about the EU trademark reform here.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association