Trade marks: The effects of new rules for European Union Trade Marks

  Written on 07.04.2016

New rules on European Union Trade Marks (EUTMs) have been in force for two weeks. Also life science companies must be aware of the effects of this new regulation.

On 23rd of march 2016 the EU-regulation entered into force amending the existing rules for European trade marks on several points of interest to all pharmaceutical and medicinal device companies being holders or future holders of European trade marks. The changes can be categorized into three, namely institutional, technical and fee changes.

Name changes

First of all, European trade marks, which were formerly referred to as Community Trade Marks (or CTMs), are now titled European Union Trade Marks or just EUTMs. Moreover, the European trade mark office, previously known as the Office for Harmonization in the Internal Market (OHIM), is with now called the European Union Intellectual Property Office or EUIPO. The name changes are the consequence of the adaption to the Lisbon Treaty as all references to the Community have been substituted by references to the European Union.

Important material changes

With the new regulation trade mark holders have been provided with improved remedies for stopping suspected counterfeit goods in transit through EU member states destined to countries outside the EU. EUTM holders can now prevent third parties from bringing such goods into the EU, if the goods, including packaging, come from countries outside of the EU and bear an identical or similar mark as the owner’s EUTM. However, it is important to note that this entitlement is lost, if the holder of the goods, during the proceedings to conclude whether the EUTM in question is infringed, provides evidence for the fact that the EUTM owner is not authorized to forbid the placing of the goods in the country of end destination.

Also, the requirements as to the designation of goods and services are toughened in so far, as the regulation codifies the practice on the standards of clarity in this regard. This entails that an applicant for a EUTM must be clear and precise in terms of designating the goods and services for which a trade mark is sought protected. Consequently, trade marks registered before June 2012 that include designation of goods and services using all the general indications of a particular class heading of the Nice Classification must specify the list of goods and services before 24 September 2016, if the trade mark registration was only meant to concern some of those goods or services.

Lower fees

The new rules stipulate a change in the fee structure meaning lower fees for applying for an EUTM to the benefit for many applicants.

Previously, the application fee was EUR 900 for protection of the trade mark in up to three classes of goods/services, whereas each extra class of goods/services amounted to EUR 150. The application fee is now EUR 850 for one class, EUR 50 for the second class, and EUR 150 for each additional class.

The same structure follows in terms of renewal fees.

Contact Delacour’s team of IP and life science specialists in order to find out more about these changes in European trade mark law and the impact for the pharmaceutical and medical device industry.