news

EU trade mark update

The “Office for Harmonization in the Internal Market” (or “OHIM”) is responsible for registering trade marks (and designs) with European Community-wide effect, and has been an undoubted success, at least in terms of the number of applications lodged with the office.

Recently, there were announced some changes to the way in which the Office will operate and to the legal effects of a Community Trade Mark (CTM) registration.  Some of these changes are significant and businesses would benefit from being aware of them.  The main changes are summarised below.

The most obvious change is that use of the abbreviations “OHIM” and “CTM” will be discontinued.  The CTM is becoming the “European Union Trade Mark”, which will presumably be shortened to “EUTM”.  OHIM (which has always seemed an obscure name) will be re-named as the European Union Intellectual Property Office (EUIPO).  This is probably an improvement on OHIM, but still perhaps not an ideal name in that the EUIPO will not handle all Intellectual Property – patents will continue to be the province of the European Patent Office.

Currently, CTM applicants may include up to three classes of goods or services in their application for a single official fee.  This is changing.  For the EUTM there will be a new, slightly lower, fee for applications in a single class, but additional fees will apply for additional classes.

In a previous News item we commented on the “Own Name” defence against allegations of infringement of a registered trade mark.  In the future, this defence will only be available in relation to individuals, not corporate entities.

Non-use of a registered trade mark will become a defence to claims of infringement.  If a registered mark is more than 5 years old, the owner will be able to assert their rights only to the extent that the mark is in use at the time the proceedings for infringement are initiated.  We think this is a good change, although it will add to the complexity of bringing an action for infringement of an EUTM.

There are several other changes being introduced as well, but the ones mentioned above are those most likely to have a noticeable impact.  If you need advice of have any questions please speak to your usual contact at Nash Matthews.