New EU trade mark regulation Changes applying 1 October 2017

On 23 March 2016, Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation (the Amending Regulation) entered into force.

Among other things, the Amending Regulation changed: the name of the Office to the European Union Intellectual Property Office; the name of the trade mark administered by the Office to the European Union trade mark; and the fee system for trade marks. There were also changes to examination proceedings, absolute grounds, opposition and cancellation, relative grounds and appeals. An overview of the changes can be found here.

The Amending Regulation contains a number of provisions that will apply as and from 1 October 2017, as they had to be developed by secondary legislation.

The secondary legislation consists of the Implementing Regulation laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark and the Delegated Regulation supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96.

The secondary legislation contains detailed transitional provisions that set out when the new procedural rules apply to proceedings (Transitional Provisions table).

The legislative reform process acknowledges the success of the EUTM system, confirming that its main principles have stood the test of time and continue to meet business needs and expectations. However, it seeks to build on this success by making it more efficient and consistent as a whole and adapting it to the internet era.

The Amending Regulation, in particular, seeks to streamline proceedings and increase legal certainty, as well as to clearly define all the tasks of the Office, including the framework for cooperation and convergence of practices between the Office and the intellectual property offices of the Member States.

As and from 1 October 2017, there will be three main areas of change. Click on each section to get full details:

The contents of this section are for general information and awareness of the EU trade mark regulation. They are not legally binding.
We strongly recommend that all users or potential users refer to Regulation (EU) No 2015/2424, available in all EU languages.
Please note that the Office’s Guidelines remain the main point of reference for users of the European Union trade mark system and professional advisers who want to make sure that they have the latest information on EUIPO’s examination practices.

Information relating to the changes which entered into force on 23 March 2016 can be found here.