We are set to witness a substantial trademark legislation reform in 2016. The EU Commission, the Council and the European Parliament are at a very advanced stage with their preparatory work in this area. If adopted, it will be the most significant trademark reform since the complete harmonization of national trademark systems and the introduction of a community trademark in the 90s.
The draft reform includes a new Trademark Directive to be implemented by Member States in the medium term, as well as a new Community Trademark Regulation, which would become applicable in the short term once adopted.
Among the most relevant modifications envisaged by the new regulatory package, we highlight the following:
- Symbolically, the Community Trademark will be redubbed “European Union Trademark”. The OHIM will be redubbed European Union Intellectual Property Office (EUIPO).
- The legal requirement for trademarks to be graphically represented will disappear, opening the gates for new forms of non-traditional trademarks.
- The harmonization of national trademark systems will be consolidated. Member States will need to incorporate administrative proceedings for trademark cancellation in their respective national Offices. In Spain, the competence for trademark cancellation is currently attributed to Courts and Tribunals. Thus, the reform will reduce the cost of litigation to cancel trademarks.
- The fees relating to Community Trademarks will be modified. Currently, a basic fee includes up to 3 classes of products and services. This system is inefficient in most cases, where applicants are only interested in registering trademarks for one or two classes of products and services. With the reform, we expect that each class of product or service will be paid separately. This is already the case for internal Spanish trademarks.
- Renewal fees are substantially reduced.
- The system of product and service designation will be modified as a result of the IP Translator case and the consequent modification of the class heading system.
To sum up, the reform is significant but not groundbreaking. The new regulatory system will seek to adapt and improve certain aspects that have proven inefficient or improvable over many years. We hope the work of the EU institutions will proceed as expected and will keep you informed as soon as the reform is adopted.