The European Parliament, Council and Commission reached an agreement on how to reform the Community trademark system, which is entering into force in the second quarter of 2016. At the first glance, there are no major changes; however, the owners should benefit from the changes once they come in effect.

Naming changes

Two main changes in names will be made after the reform:

  1. the Community trademark will be replaced by the European trademark, accordingly in all the other names ‘Community’ will be replaced with ‘European’; and
  2. the Office for Harmonization in the Internal Market (trademarks and designs) will be renamed to the European Union Intellectual Property Office. The new name could be a little confusing as the office will still be responsible for trademarks and designs only.

Requirement of graphic representability

The requirement of ‘graphic representability’ will be removed. Currently, it results in a great deal of legal uncertainty with regard to certain non-traditional marks, such as mere sounds. In the latter cases, representation by other than graphical means may even be preferable to graphic representation, if it permits a more precise identification of the mark and thereby serves the aim of enhanced legal certainty.

The proposed new definition leaves the door open to registering matter that can be represented by technological means offering satisfactory guarantees. The idea is not to go for a boundless extension of the admissible ways to represent a sign but to provide for more flexibility in that respect while ensuring greater legal certainty.

Changes of classification

After the reform, general indications of the heading of the class of the Nice Classification may be used to identify goods or services, provided such identifications are sufficiently clear and precise. The amendment clarifies that the use of general terms has to be interpreted as including all goods or services clearly covered by the literal meaning of the term.

The amendment allows the proprietors of European trademarks, which have been registered before 2012, to adapt their lists of goods and services to with the case law of the Court of Justice in order to ensure conformity of the content in the register with the requisite standard of clarity and precision.

Lower official fees

Currently, the applicants are required to pay a EUR 900 registration fee, where an application covers up to 3 classes of goods and services. After the reform, the minimum fee should be lowered to that of 1 class and be increased with each additional class. The same shall apply to renewal fees.

Intellectual property