The Community trademark is now European Union trademark.
Following the latest reform, the office for Harmonization in the Internal Market (OHIM) changes its name in the European Union Intellectual Property Office (EUIPO) and the community trademark in European Union trademark.
The Community trademarks existing in that date have automatically become European Union trademarks without the need of any request from their owners.
The new rules of the European Union trademark
From 1 October 2017 some changes have occurred in the field of the protection of the European Union trademark. In brief, three macro areas can be identified: changes in the rules concerning the graphical representation of the mark; introduction of the EU certification mark, some procedural changes.
From 1 October 2017, according to the article 4 of the European Union trademark Regulation n. 2017/1001
“An EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the Register of European Union trademarks (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
Therefore, graphic representation of the trademark is no longer mandatory: what is important is the representation of the trademark, even if carried out by other means, is likely to determine the object of protection with sufficient clarity.
In this way, those categories of brands that are not susceptible to graphic representation – but which, for example, can only be represented in electronic format, such as multimedia brands or movement marks – become acceptable.
EU certification marks
According to article 83 and 84 of the European Union Trademark Regulation n. 2017/1001
“An EU certification mark shall be an EU trademark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified” (article 83,1)
An applicant for an EU certification mark shall submit regulations governing the use of the EU certification mark within two months of the date of filing (article 84,1).
The regulations governing use shall specify the persons authorized to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark. Those regulations shall also specify the conditions of use of the mark, including sanctions (article 84,2).
Among the others (the following is not an exhaustive list) there have been changes in the following areas: priority, acquired distinctiveness, opposition and cancellation proceedings, languages and translations, communication with the office, Boards of Appeal
More specifically, with regard to the filing of the European Union trademark, we have gone:
- from the system of the Regulation n.207/2009, which was Euro 900 which covered up to three classes in case of on-line trademark filing and additional Euro 150 for each class from the fourth and all subsequent classes
- to the new system, which is Euro 850 for one class, Euro 50 in addition for the second class and Euro 150 in addition from the third and all subsequent classes
There have been reductions for the renewal of the European Union trademark, and we have gone:
- from the system of the Regulation 207/2009, which was Euro 1350 which covered up to three classes and Euro 400 for each class from the fourth and all subsequent classes
- to the current system which is Euro 850 for the renewal in the first class, Euro 50 for the second class and Euro 150 from the third and all subsequent classes.