Revision of the European Trademark System: steps towards a more efficient and harmonized Europe

The European Council, Parliament and Commission recently approved the wording of a revision of the European Trademark System that will affect both the Community Trademark system (regulation) as well as the trademark laws of the Member States (directive).

Among the numerous novelties, we would basically like to draw your attention to the following changes:

  • A graphic representation of a sign is no longer a requirement for a valid trademark: A sign can now be represented in any appropriate form using generally available technology, as long as the representation offers satisfactory guarantees to that effect.
  • The single tax for the designation of up to three classes will be eradicated; from now on each designated class will require the settlement of a specific tax, the idea being to reduce the trademark applications with an excessively large list of designated goods and services that artificially “spam” trademark registers.
  • Principal procedural rules in the Member States and in the European Union trademark systems will be aligned:
    • Member States shall provide for an efficient and expeditious administrative procedure before their offices (and no longer only their courts) for revocation or declaration of invalidity of trade marks, which will represent a double advantage, both in terms of costs and efficiency.
    • A cooling-off period will be instituted in the national opposition proceedings promoting thus the amicable settlement of trademark conflicts.
  • There will be some progress in terms of taxes, even if finally the filing of a Community trademark does not necessarily become a lot cheaper (depending on the number of classes to file). However taxes for renewals are being reduced, which means that trademark portfolio maintenance costs are clearly getting more cost effective.
  • Guarantee marks and certification marks will benefit from an autonomous system and the protection of geographical indications is being reinforced throughout Europe.
  • Measures in view of fighting counterfeit goods more effectively are being implemented and can be applied to potentially counterfeit goods in transit.
  • Last but not least, terminology is being updated:  The ‘Community trade mark’ is being replaced by ‘European Union trade mark’, and the ‘Office for Harmonisation in the Internal Market’ will finally become the ‘European Union Intellectual Property Office’!

Juliane Fromm
Olivier Laidebeur