EU Trade Mark Law Reform – Final Legislative Approval Completed

By Arthur Artinian and Scott Steinberg

Further to alert of 11 June 2015 (here) and recent webinar covering the major developments affecting international brand owners (here), the proposals to amend the Community Trade Mark Regulation and Trade Mark Directive were adopted at second reading by the European Parliament on 15 December 2015.  This was the final approval required at EU level and follows the Council adopting its position at first reading on 10 November 2015.

The Regulation will to enter into force 90 days after its publication in the Official Journal of the European Union, and this is expected in February or March 2016.  The Directive will enter into force 20 days after publication and must be implemented by Member States into national law within 3 years. Some provisions relating to administrative invalidity and revocation procedures may be implemented within 7 years.

Government representatives from various EU Member States have welcomed this final step.  Baroness Neville Rolfe (UK Minister for IP) today said that “…a reformed European trade mark system will deliver real benefits for trade mark users …The changes to the Directive and the Regulation should increase legal certainty and clarity for businesses looking to register and enforce their trade mark rights in Europe. The convergence of trade mark practices and processes throughout the EU will create a more robust and streamlined system fit for the digital age.”

We will keep you updated on the progress of the Regulation and Directive.  In the meantime, brand owners should be closely considering their CTM (soon to be EUTM) filing strategies for 2016 in light of the changing fee structure for single class filings and reviewing their pre-2012 registrations to ascertain whether declarations should be filed before the Regulation comes into effect to clarify their intention to claim rights to certain goods or services under the headings of the Nice Classification.