The European Union is an ambitious project that grew from the ashes of World War II with the aim of forging an ever-closer union between the European member states.

Among many fields, intellectual property law has always played a key role due to its close connection to innovation, economic growth and development.

In the last seven years, much effort has been dedicated to reforming the European Union trademark system and of the Community Trademark Office. The publication in December 2015 of the European Union trademark reform legislative package in the Official Journal marks the culmination of this ongoing effort.

The package comprises a new EU Trade Marks Directive (harmonising the trademark laws of the different EU member states) and a series of amendments to the EU Trade Marks Regulation (which sets out the rules applicable to EU trademarks and to the Office) which will come into effect on March 23, 2016.

Among the many important changes, one which has particular significance is the fact that under the provisions of the amending Regulation, the name of the Office will change from OHIM (the Office for Harmonization in the Internal Market) to the more appropriate EU IPO, the European Union Intellectual Property Office.

With the same spirit of transparency and consistency, the Community trademark, administered by the Office since 1996, will be renamed the European Union trademark. On the same date, March 23, 2016, all Community trademarks will automatically become European Union trademarks; users do not need to take any action and the change of name will not impact the scope of protection of the trademarks.

The new reform and the amended Regulation also provides for several procedural changes to the trademarking procedure. Among the many changes, an important one is the calculation of the official fees payable. In particular, there will be:
a) A new one-fee-per-class system for trademark application and renewal fees,
b) An overall decrease in trademark application and renewal fees payable to the Office, for the benefit of users

In addition, the amending regulation codifies the existing practice for trademarks filed after the judgment in the ‘IP Translator’ case which has led to the practice of identifying with sufficient clarity and precision the goods and services for which the protection of the trademark is sought. The new regulation harmonises this practice and gives trademark owners a transitory six-month period to adjust the specification of their marks to what they originally intended when they filed them, by filing a specific declaration.

Turning to oppositions and cancellations, one change worth noting is that the opposition period against international registrations designating the EU (which currently commences six months after publication) will change to one month after the date of publication. The opposition period itself remains at three months.

While most of the changes will come into effect in March 2016, some other important changes will come into effect in 2017, such as the creation of Community Certification Marks, which allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with the certification requirements.


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