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New law: New rules for UK owners of European Community trade marks

UK businesses and individuals who use or have registered trade marks in the EU should consider whether they should take action following changes in the law from March 2016.

Legal Alert

This update was published in Legal Alert - March 2016

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

When European Community trade marks are registered, the owners must specify the goods or services they want the mark to cover, by reference to prescribed 'classes' of goods or services. These classes comprise a class heading, and a list of individual goods or services that fall within the class.

Previously, some owners applying to register a Community trade mark have simply referred to the heading of the relevant class (or classes) in their applications, assuming this works as a shorthand way of referring to all individual goods or services within the class. However, uncertainty arose as to whether this assumption was correct.

The new rules make clear that the individual goods and services covered by a registered Community trade mark are to be interpreted solely by reference to the actual words used in the registration. The new rules operate retrospectively, so the owner of a registered Community trade mark which simply uses the words in a class heading in the registration will now find that their mark covers the goods or services in the heading, but none of the other goods or services in that class.

Owners of Community trade marks filed on or before 21 June 2012 now have until 23 September 2016 to file a declaration, changing their registration if appropriate, so that it expressly states every individual good or service in the relevant class that they want the mark to cover.

Other new rules allow greater flexibility when registering marks so that the mark is easier to protect, eg smells, tastes and sounds, provided certain criteria are followed. Businesses should consider whether they can now register such things that previously they were unable to register.

Other reforms include:

  • Changes to the rules about registering marks that designate origin and geographical indications, traditional terms for wine and specialities, or names of plant varieties
  • A change to the 'own name' defence for corporations infringing registered EU marks
  • Changes to EU trade mark renewal dates
  • Changes to fees payable

The new rules also change some of the terminology: the terms 'Community trade mark' and 'Office for the Harmonisation of the Internal Market (OHIM)' are replaced by 'European Union Trade Mark' and 'European Union Intellectual Property Office (EUIPO)' or 'Agency' respectively.

Operative date

  • March 2016

Recommendations

  • UK owners of trade marks used in the EU, whether registered as European Union trade marks or not, should review the changes and consider whether they need to take action

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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